Appeal No. 95-1622
Application 07/890,593
energy and which is essentially free of reactive nucleophilic groups. With respect to the latter limitation,
appellants have specified the definition of the term “nucleophilic group” (specification, page 6). While
appellants have provided no examples of the nucleophilic groups falling within this definition in their
specification, we observe that Wright discloses “suitable nucleophiles” using the same definition (col. 6,
lines 62-66; compare col. 2, lines 60-63).
Appellants have not, however, specifically defined the extent to which the phrase “essentially
free” limits the presence of nucleophilic groups on the organometallic compound. The term “essentially
free” is a term of degree for which the specification must provide a definition or some standard of
measurement, in the absence of which the appealed claims would be indefinite. See In re Marosi, 710
F.2d 799, 802-03, 218 USPQ 289, 292 (Fed. Cir. 1983); see also Seattle Box Co., Inc. v.
Industrial Crating & Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984).
We observe that appellants have stated that “[a] feature of the invention is the lack of reliance on
nucleophilic crosslinking of the energy sensitive polymer films to produce adherent coatings” and the
“coating does not rely on crosslinking of the polymeric coating to generate adhesive forces”
(specification, page 5, lines 24-26, and page 8, lines 3-4). Based on this disclosure, we conclude that
the standard of measurement by which to determine whether the extent of the presence of nucleophilic
groups on the energy sensitive organometallic compound per se exceeds the limitation “essentially free
of reactive nucleophilic groups” is whether the reactive nucleophilic groups present on the energy
sensitive organometallic compound per se must be relied on to crosslink the organometallic moieties on
the substrate in order to produce coatings adherent to the substrate.
However, we do not construe the limitation placed on the nucleophilic groups that can be
present on the organometallic compound per se as limiting the presence of nucleophilic groups on other
ingredients that can be present in any coating applied to the substrate and subsequently chemically
bonded thereto in either appealed claim 2 or appealed claim 24. Indeed, the transitional term
“comprising” in the preamble of these appealed claims permits the article claimed and prepared to
include additional materials which can materially affect the basic and novel characteristics thereof,
including monomers and polymers substituted by nucleophilic groups following within appellants’
definition of this term. In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981)
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