Appeal No. 95-1622
Application 07/890,593
We construe appealed claim 2 to require that the claimed article7 comprises at least one
organometallic moiety that is chemically bonded through at least one organometallic group thereof to at
least one site on a substrate, wherein the organometallic moiety is derived by exposing to energy an
energy sensitive organometallic compound that is essentially free of reactive nucleophilic groups and the
site on the substrate to which the organometallic moiety is chemically bonded was a basic reactive site.
Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802
(Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning containing at least - five
specific ingredients.”). We construe appealed claim 24 as encompassing a process for preparing an
article of appealed claim 2 since the same limitations appear therein. Appellants in their specification
(page 6) have specifically defined an “ogranometallic compound” as
a monomeric organometallic complex or a homopolymer or copolymer comprising at least one
energy sensitive organometallic group [sic, that] is incorporated in or appended to the
backbone of the polymer,
an “organometallic group” as
a chemical substance in which at least one carbon of an organic moiety is bonded to a
transition metal atom,
and “energy sensitive” as
able to undergo chemical reaction or transformation upon exposure to electromagnetic
radiation . . . , accelerated particles . . . , and thermal . . . energy.
Thus, as specifically defined by appellants, the energy sensitive organometallic compound can be any
monomer or polymer containing an organic moiety having a transition metal atom bonded to a carbon
thereof, which is able to undergo chemical reaction or transformation upon exposure to
7 Appealed claim 2, appealed claims dependent thereon, and appealed claims 24 and 25 contain the
term “energy sensitive article” in the preamble thereof. We do not consider this term to constitute a
limitation in the appealed claims because the energy sensitivity of the organometallic group of the
organometallic compound coated on the substrate would be dissipated upon exposure thereof to energy
which results in the chemical bonding of the organometallic compound to the substrate through the
organometallic group as required in the last clause of claims 2 and 24. See Corning Glass Works v.
Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In re
Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
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