Appeal No. 95-1622
Application 07/890,593
supported by the record as a whole, even with careful consideration of Bailey, why the assertions as to
the scope of objective enablement set forth in the specification with respect to the claimed articles and
the claimed methods of preparing the same as specified in the full breadth of all of the appealed claims is
in doubt, including reasons why the description of the invention in the specification would not have
enabled one of ordinary skill in this art to practice the claimed invention without undue experimentation.
In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re Geerdes, 491
F.2d 1260, 1264, 180 USPQ 789, 793 (CCPA 1974); In re Marzocchi, 439 F.2d 220, 223-24, 169
USPQ 367, 369-70 (CCPA 1971). Accordingly, we reverse this ground of rejection.
We have also carefully considered the ground of rejection of appealed claims 15 and 16 under
§ 112, second paragraph, and contrary to the position of the examiner (answer, pages 3 and 9-10), we
agree with appellants (principal brief, pages 9-10) that the language of these claims as a whole as well
as in view of the specification in fact sets out and circumscribes the organometallic copolymer products
in terms of the starting materials with a reasonable degree of precision and particularity as required by
the statute. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). The fact that
the starting materials may be broadly defined is not per se indefiniteness. See generally In re Gardner,
427 F.2d 786, 787-88, 166 USPQ 138, 139-40 (CCPA 1970). Accordingly, we reverse this
ground of rejection.
We now turn to the grounds of rejection based on prior art with which we have compared the
claimed invention defined by appealed claims 2 and 24 as we have construed these claims above.
Upon carefully considering the teachings of Wright, we must agree with the examiner (answer, pages 4-
6 and 11-13) that appealed claim 2 is anticipated under § 102(b) or obvious under § 103 over this
reference. We find that in Embodiment II (e.g., col. 2, lines 32-36; col. 3, lines 37-40, col. 4, lines 26-
61, col. 5, lines 51-59, col. 11, lines 24-35, and Wright Examples 13-21), Wright teaches that a
coating of a copolymeric organometallic compound containing an energy sensitive organometallic group
and a polynucleophilic compound is applied to substrates having basic reactive sites (e.g., col. 11, lines
5-15) and the coated substrate is exposed to radiation energy to form an adherent coating on the
substrate (e.g., col. 10, line 59, to col. 11, line 44). Indeed, in Wright Examples 13 and 18, for
example, an organometallic copolymer of 1-vinyl-2-(and –3-
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