Appeal No. 2006-0048
Application 09/800,477
We have considered with the latter ground of rejection the objection to the specification
under 35 U.S.C. § 132 (answer, pages 4-5). See Manual of Patent Examining Procedure (MPEP)
§§ 608.04(c) and 2163.06(II) (8th ed., Rev. 3, August 2005); brief, pages 12-13.
We refer to the answer and to the brief for a complete exposition of the positions
advanced by the examiner and appellants.
In order to review the ground of rejection under § 102(b), we first interpret claim 6, on
which claim 7 depends, by giving the terms thereof the broadest reasonable interpretation in their
ordinary usage in context as they would be understood by one of ordinary skill in the art in light
of the written description in the specification, unless another meaning is intended by appellant as
established in the written description of the specification, and without reading into the claims
any limitation or particular embodiment disclosed in the specification. See, e.g., In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The term in claim 6 at issue is “foil” which
appears in the phrase “an acoustically transparent support element comprising at least one layer
of perforated foil oriented in a circumferential direction and having centrifugal force resisting
tensile strength.” In the context of the claimed “motor vehicle wheel” encompassed by this
claim, “the acoustically transparent support element [comprising at least one layer of perforated
foil] being coupled to the insert [comprising a ring-shaped sound absorbing material].” Claim 7
further limits claim 6 by requiring “the foil being isotropic.”
Appellants argue that the examiner cannot disregard the term “‘perforated foil’ . . .
because . . . [appellants have] not defined the foil thickness in the specification,” and that “it is
clear from page 9, lines 7-19 and lines 16-23 of page 10 [of Dodt ‘306] that the tube [configured
similarly to a bicycle tube or a tire inner tube] is disclosed as being made of rubber, not foil”
(brief, pages 28-29). Appellants do not submit with this argument a definition for the term “foil”
in the context of the specification and claims. We find that elsewhere in the brief, appellants
contend that the term “foil” as disclosed in the specification can encompass a synthetic material,
arguing that “there are many synthetic materials which have the form of a foil such as, e.g.,
MylarŪ,” and submit “that one of ordinary skill in the art would have no difficulty
understanding
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