Appeal No. 95-1622
Application 07/890,593
claim 2 that the organometallic compound must be essentially free of nucleophilic groups as we have
construed this limitation above. Compare Exxon Chemical Patents, supra. We further find in this
respect, as we also did above, that Wright (e.g., col. 5, lines 43-50) would also have reasonably
suggested to one of ordinary skill in this art that the Wright Examples 1-12 can be modified to provide
coatings having a substantially higher ratio of energy sensitive organometallic groups to nucleophilic
groups, and thus a greater concentration of energy sensitive organometallic groups that would not be
involved in the crosslinking reaction, with the reasonable expectation of obtaining an adherent coating
upon exposure to energy.
We have not applied Wright Embodiment IV to appealed claim 2 because the organometallic
complex used to crosslink the nucleophilic group containing polymer in this Embodiment is not a
monomer (e.g., col. 2, lines 42-43, col. 3, lines 44-46, col. 5, lines 1-39, and Wright Examples 23-25).
Accordingly, it reasonably appears to us that the articles of appealed claim 2 are necessarily or
inherently identical or substantially identical to the articles disclosed by Wright and that one of ordinary
skill in this art would have further modified the Wright Examples to obtain coatings with a higher ratio of
energy sensitive organometallic groups to nucleophilic groups with the reasonable expectation of
obtaining an adherent coating upon exposure to energy. Thus, the burden falls upon appellants to
establish by effective argument and/or objective evidence that the claimed invention patentably
distinguishes over this reference, whether the rejection is considered to be based on § 102(b) or § 103.
In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
We have carefully considered all of appellants’ arguments (principal brief, pages 11-13 and 17;
reply brief, pages 3-6) and the evidence presented in the McCormick declaration10 in light of appellants’
arguments. We are not convinced by appellants’ arguments that appealed claim 2 patentably
distinguishes over Wright. While appellants contend that “all of the compositions of Wright must
contain reactive nucleophilic groups” (principal brief, page 17) and thus the “compositions of the
present invention and those of Wright are different, including the starting materials” (reply brief,
10 The McCormick declaration was submitted on March 11, 1994 (Paper No. 7).
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