Ex Parte Schmoock

Board of Patent Appeals and Interferences

May 30, 2002

09048533 (B.P.A.I. May. 30, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board

Paper No. 26

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HELMUTH SCHMOOCK
__________

Appeal No. 2001-1818
Application 09/048,533
__________

HEARD: MAY 23, 2002
__________

Before LIEBERMAN, DELMENDO, and MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1-3, 5-15,
and 32. Claims 16-18, 20-31 and 33 have been withdrawn from consideration, and
claims 4 and 19 have been canceled.
CLAIMS

Claim 1 is representative of the claims on appeal, and reads as follows:
1. A foil having two substantially parallel surfaces, comprising: a substrate
having a first side at one of said surfaces and a second side; a metallic film vaporized
Appeal No. 2001-1818
Application 09/048,533

2
onto and adhering to said second side of said substrate, said metallic film being devoid
of defects; and a protective layer having a first side completely covering said film and a
second side facing away from said film, said layer and said film together constituting a
coating at the second side of said substrate that is fluidtight against at least one of
liquids and gases, and said layer: (a) being vaporized onto the film immediately
following vaporization of the film onto said substrate while said film is devoid of defects,
(b) having an affinity for the metal of said film, (c) having a thickness between about
0.5µ and about 1/15,000 mm, (d) being an organic material which is at least one of a
natural resin, a synthetic resin, a natural wax, or a synthetic wax, (e) being substantially
non-smearing.

THE REJECTION

Claims 1-3, 5-15, and 32 stand rejected under 35 U.S.C. §112, first paragraph,
as containing subject matter which was not described in the specification in such a way
as to reasonably convey to one skilled in the relevant art that the inventor, at the time
the application was filed, had possession of the claimed invention.
We reverse.
DISCUSSION
The present invention is directed to sheet material used for packaging which are
resistant to permeation by gases and fluids. The composite as claimed includes a
substrate, which is coated on one side by a metallic film vaporized onto the surface of
the substrate. The metallic film is then coated by a protective layer vaporized onto the
metallic film “while the metallic film 2 is still intact and devoid of defects” (Appeal Brief,
page 3, line 16).
The Rejection of Claims 1-3, 5-15, and 32 under 35 U.S.C. § 112, First Paragraph
The Examiner states that:
The original disclosure does not provide adequate support for the claimed foil
comprising a metallic film that is ‘devoid of defects’ (as recited in lines 3-4 of
claim 1 as appears on page 1 of the Appendix to the appellant’s brief). While the
metallic film is said to be ‘devoid of scratches and/or other defects’ at one point
during manufacture of the foil (p.6, l. 15-17), it is not certain that the metallic film
Appeal No. 2001-1818
Application 09/048,533

3
of the finished product (i.e. the claimed foil) is necessarily devoid of
defects/scratches/pin windows. This is particularly questionable in view of the
first full paragraph on page 9 which refers to a ‘smaller number of pin windows’
when the protective coating is applied to the metallic film. Reference to a
‘smaller number’ of pin windows implies that some pin windows are present and,
in view of page 6, lines 21-23, pin windows are defects. (Examiner’s Answer,
page 3, line 15 - page 4, line 6).

The Appellant, on the other hand, distinguishes the product at various stages of
manufacture, asserting that an intermediate product (defined as the post-metallization
but pre-protective layer product) is the product that is necessarily devoid of defects.
(Appeal Brief, page 6, line 7 - page 7, line 1).
The Examiner points to claim 1 and states that claim 1 is drawn to a finished
product (the product comprising a substrate, a metallic film, and a protective layer), and
states that claim 1:
requires the metallic film of the finished product to be “devoid of defects”. The
examiner maintains the position that the original disclosure does not provide
adequate support for the claimed foil which comprises a substrate, a metallic film
that is devoid of defects, and a protective layer covering the metallic film.
(Examiner’s Answer, page 5, lines 6-10).

The Appellant in reply asserts that the metallic film need not forever be free from
defects, and does not preclude a film thus formed from later developing defects in
subsequent processing. (Reply Brief, page 2, lines 13-21).
A rejection for lack of support in the specification is a rejection under the written
description requirement of the first paragraph of §112. See Pall Corp. v. Micron
Separations, Inc., 66 F.3d 1211, 1219, 36 USPQ2d 1225, 1230-1231 (Fed. Cir. 1995).
The Applicant must convey with reasonable clarity to those skilled in the art that, as of
the filing date sought, he or she was in possession of the invention. The invention is, for
Appeal No. 2001-1818
Application 09/048,533

4
purposes of that inquiry, whatever is now being claimed. Vas-Cath v. Mahurkar, 935
F.2d 1555, 1563-1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
We turn to claim 1 and the specific element the Examiner has focused on:
a metallic film vaporized onto and adhering to said second side of said substrate,
said metallic film being devoid of defects;

The specification, at page 6, lines 15-17, describes the application of the
protective layer:
Such [protective] layer is preferably applied to the metallic film while the latter is
still devoid of scratches and/or other defects which would render the film
permeable to gases.

This amply supports the three-layer structure claimed in claim 1, a substrate, a
metallic film devoid of defects (e.g. scratches or pin-holes), and a protective layer.
One of skill in the art would recognize that this passage means, at the time of
application of the protective layer, a three-component structure is formed which is
devoid of defects in the metallic film layer.
It appears to us that the Examiner has focused on a passage at page 9, lines 5-
13 which discusses the processing of the metal film after the protective coating is
applied. In this discussion, the Applicant states that:
If a protective coating which has a high affinity to the metal film, is evaporated
onto the metal film immediately after coating the metal film, then the large
surface tension in the metal film is absorbed due to the high affinity. The metal
film then becomes less susceptive to mechanical stress and tends to produce a
smaller number of pin windows. The foil onto which the metal film is evaporated,
can then be deflected over rollers and wound up without adversely affecting the
imperviousness of the metal.

We note that this paragraph relates to later processing of the three-layer
structure, i.e. deflecting, rolling, etc. Those later processing steps and the end results
of them are not the subject of the present claim; rather, they merely recite what may
Appeal No. 2001-1818
Application 09/048,533

5
happen to the finished product. The claim requires certain features, and although later
processing may destroy those features, thereby rendering the end use of the foil (or the
foil itself) essentially noninfringing, the scope of our inquiry need not extend that far.
We conclude that the language of the specification conveys to one of skill in the
art that the Applicant had possession of the invention as claimed at the filing date of this
application.
REVERSED

)
PAUL LIEBERMAN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO )
Administrative Patent Judge )
) APPEALS AND
)
)
JAMES T. MOORE ) INTERFERENCES
Administrative Patent Judge )
)

JTM/ ki
Appeal No. 2001-1818
Application 09/048,533

6

DARBY & DARBY
805 THIRD AVENUE
NEW YORK, NY 10022