Appeal No. 2006-0048
Application 09/800,477
what is meant by the term foil in the context of the invention” (pages 7 and 21-22).
The examiner contends that the
term “perforated foil” does not distinguish over the [Dodt ‘306] perforated rubber
bicycle tube or tire inner tube because 1) the original disclosure provides no special
definition for the term which would require a thickness less that that of a rubber
bicycle tube or tire inner tube (which is essentially a torodial rubber balloon), and 2)
contrary to appellants’ arguments (pp. 21 and 29 of the brief), the dictionary definition
of the term “foil” as a “thin flexible sheet of metal” in Webster’s II New College
Dictionary[3] cannot control the interpretation of the claim term “perforated foil”
because requiring the foil to be metal would exclude appellants’ own preferred
embodiment of foil made of “synthetic material” (specification paragraph 0061).
We agree with the examiner that the specification does not teach a “thickness” range for
the term “foil.”. It is disclosed in the specification that as a “support element,” the “foil” is “at
least one layer,” can be a “synthetic material,” is “easily handled” and “flexible in all
directions,” and is an alternative to “at least one layer of fibers” which can be a “woven mesh”
(e.g., [0016]-[0018], [0020],[0033], [0061]). Thus, while there is no thickness range disclosed
for the “foil” per se, we determine that in the context of the disclosure thereof in the written
description in the specification, one of ordinary skill in this art would recognize that the term
“foil” is used in its ordinary, dictionary meaning of a very “thin” piece of any material, which
dictionary meaning is not limited to “metal” as the examiner contends.4
In comparing the claimed motor vehicle wheel thus encompassed by claims 6 and 7 with
the motor vehicle wheel as described at page 9, l. 1, to page 11, l. 10, and Fig. 2, of Dodt ‘306 as
relied on by the examiner, we find no scientific explanation in the statement of the ground of
rejection establishing that one skilled in this art would consider the rubber bicycle tube or tire
inner tube 5 to be a “foil” and indeed, a “perforated foil.” In the absence of such explanation, we
find that the examiner has not pointed out where, as a matter of fact, each and every element of
3 See Webster’s II New Riverside University Dictionary 492 (Boston, The Riverside Publishing
Company. 1988)
4 See generally, The American Heritage Dictionary Of The English Language 681 (4th ed.,
Boston, Houghton Mifflin Company. 2000); Webster’s Third New International Dictionary Of
The English Language Unabridged 1786 (Philip Babcock Gove, ed., Springfield, Mass.,
Merriam-Webster Inc. 1993); Webster’s II New Riverside University Dictionary 492; The
American Heritage Dictionary, Second College Edition 519 (Boston, Houghton Mifflin
Company, 1982).
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