Appeal No. 95-1622
Application 07/890,593
Wright Examples as taught by that reference would have been within the ordinary skill in this art.
Indeed, we find that there are such significant differences in components between the declaration
Examples stated to “model” or to be “representative” of the Wright Examples and the components and
the extent of irradiation found in the Wright Examples that whatever evidence there may be of a
patentable distinction between the claimed and Wright articles with respect to either § 102(b) or § 103
is obscured in a welter of unfixed variables. Compare In re Heyna, 360 F.2d 222, 228, 149 USPQ
692, 697 (CCPA 1966); In re Dunn, 349 F.2d 433, 439, 146 USPQ 479, 483-84 (CCPA 1965).
We particularly find this to be the case with respect to Wright Example 18 which is stated by declarant
McCormick to be the “only example that does not use an excess of nucleophile” and thus stands on a
different factual footing from the other Wright Examples.
Accordingly, we affirm the ground of rejection of appealed claims 2 through 14, 16 and 18
through 21 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.
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, under 35 U.S.C. § 103 as being unpatentable over Wright. We have compared these
appealed claims, as we have construed claim 24 above, with Wright and, as we have discussed above,
find that Wright discloses and exemplifies processes wherein a substrate having basic reactive sites is
coated with an energy sensitive organometallic compound, having at least one organometallic group that
is essentially free of nucleophilic groups, on at least one surface of the substrate and chemically bonding
the energy sensitive organometallic compound to the basic reactive sites of the substrate by exposing the
coating to energy, which processes are necessarily or inherently, identical or substantially identically to
the processes encompassed by the appealed claims. Accordingly, because the processes of the
appealed claims and the disclosed and exemplified processes of Wright appear to be necessarily or
inherently, identical or substantially identical, 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. See, e.g., Spada,
supra; Best, supra. We have carefully considered the arguments and evidence in the McCormick
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