Appeal No. 95-1622
Application 07/890,593
(“As long as one of the monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”).
The sole limitation set forth in appealed claims 2 and 24 with respect to the substrate for the
claimed article is that the substrate must have basic reactive sites. A “basic reactive site” is defined by
appellants as “an exposed site on a substrate surface having basic functionality . . . ” (specification, page
6). The type of chemical bond formed between the organometallic group of the organometallic
compound and the basic reactive site on the substrate, such that the organometallic compound is
“chemically bonded through the organometallic group . . . to the basic reactive site” (emphasis ours), is
not specified in appealed claim 2, and is not specifically defined by appellants in their specification.
York Prod., supra. While appellants’ specification sets forth that the organometallic compound “upon
exposure to energy, bonds to basic reactive sites on a substituent via the metal center” of the
organometallic group, wherein the exposure of energy results in the loss of one or more legends and thus
in a “coordinatively unsaturated organometallic group” (specification, page 4, lines 4-5 and 10-12),
appellants also suggest the “covalent bonding of a transition metal organometallic group to the substrate”
(specification, page 5, line 31, to page 6, line 2). Indeed, an appropriately functionalized organometallic
group can bond to basic reactive sites on substrates through covalent bonding without the participation
of the metal center thereof. In this respect, we find no requirement in appealed claim 2 that the chemical
bond must be formed by exposing the energy sensitive organometallic compound coated on the basic
reactive site containing substrate to energy and indeed the combined definitions in appellants’
specification for the terms “organometallic compound” and “energy sensitive” require only that the
organometallic compound must be “able to undergo chemical reaction or transformation” (emphasis
ours), not that it must do so. We further find that appealed claim 24 does not specify any particular
moiety on the energy sensitive organometallic compound through which the resulting organometallic
moiety must be chemically bonded to the substrate.
Upon consideration of appealed claim 2 and the terms thereof, as we have construed them
above, with respect to the ground of rejection under § 112, first paragraph, enablement, we are in
agreement with appellants (principal brief, pages 10-11; reply brief, pages 1-2), that the examiner
(answer, pages 3-4 and 10) has failed to carry the burden of providing a reasonable explanation,
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