Appeal No. 95-1622
Application 07/890,593
David C. Bailey and Stanley H. Langer, “Immobilized Transition-Metal Carbonyls and Related
Catalysts,” 81 Chemical Reviews, no. 2, 109-111, 116-123, 132-145 (April 1981). 6 (Bailey)
Printed Circuits Handbook, 11.25-29 (Clyde F. Coombs, Jr., ed., 3d ed., New York, McGraw-Hill
Book Company, 1989).
The examiner has maintained the following grounds of rejection on appeal:
appealed claims 15 and 16 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter which applicants regard as the
invention;
appealed claims 2-25 are rejected under 35 U.S.C. § 112, first paragraph, as the disclosure is enabling
only for claims limited to specific substrates and organometallic compounds known to be operable with
the present invention;
appealed claims 2 through 14, 16 and 18 through 21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103 as being unpatentable over Wright;
appealed claims 2 through 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Wright
further in view of Palazzotto;
appealed claims 2 through 23 are rejected under 35 U.S.C. § 103 as being unpatentable over Wright
further in view of Palazzotto as described above, further in view of Bailey;
appealed claims 24 and 25 are rejected under 35 U.S.C. § 103 as being unpatentable over Printed
Circuits Handbook further in view of Wright; and
appealed claims 2 through 14, 16 and 18 through 21 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Bailey.
We affirm the ground of rejection under 35 U.S.C. § 102(b) or § 103 based on Wright and the
ground of rejection under 35 U.S.C. § 102(b) based on Bailey but reverse all of the remaining grounds
of rejection. Under the provisions of 37 CFR § 1.196(b) (December 1997), we enter a new ground of
rejection of appealed claims 24 and 25 under 35 U.S.C. § 102(b) as being anticipated by or, in the
alternative, 35 U.S.C. § 103 as being unpatentable over Wright.
6 We have cited and considered only the pages of Bailey that the examiner made of record in the Form
PTO-892 attached to the Office action of November 2, 1993 (Paper No. 5) which is less than the “pp.
110-145” or the “entire article” now relied on by the examiner in the answer (pages 2 and 4). Indeed,
the record contains a copy of only pages 109-111, 116-123, 132-145 of Bailey and we consider the
examiner’s reliance on the “entire article” in the ground of rejection under § 112, first paragraph, to
refer to the Bailey to the extent that is has been made of record..
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