Appeal No. 95-1622
Application 07/890,593
declaration advanced by appellants with respect to the rejection of appealed claim 2 under § 102(b) or
§ 103 to the extent that they apply to this new ground of rejection. However, our findings and opinion
with respect thereto expressed above, equally apply here. Accordingly, the burden of going forward as
to this ground of rejection remains with appellants.
We now consider the two grounds of rejection of appealed claims 2 through 23 under 35
U.S.C. § 103 as being unpatentable over the combination of Wright and Palazzotto in the first ground of
rejection and over this same combination of references further with Bailey in the second ground of
rejection. In each of the two grounds of rejection we now consider, the examiner contends that it would
have been obvious to modify the teachings of Wright by Palazzotto’s teachings of “multiple polymeric
species” and not the “organometallic salts” (answer, page 14), that is, it would have been obvious to
“have used Palazzotto’s organic constituents with Wright’s invention” (answer, page 7; see also page 6).
In the second ground considered here, the examiner adds Bailey for the teachings therein of “processes
of bonding transition metal carbonyl compounds with different substrates” (answer, page 8). Thus,
these grounds of rejection are intended to address the inventions encompassed by appealed claims 15,
22 and 23, all of which are dependent on appealed claim 2. Appealed claim 15 encompasses articles
prepared from an organic polymer prepared by reacting a chloroformylcyclopolyenyl metal carbonyl
complex with a hydroxy containing organic polymer in the presence of a base. Appealed claims 22 and
23 encompass abrasive articles prepared from abrasive particles and epoxy monomers (specification,
e.g., pages 15-16 and 20-22). With this view of these grounds of rejection, we must agree with
appellants (principal brief, pages 18-19; reply brief, page 8) that the examiner has not carried the
burden of making out a prima facie case of obviousness. We fail to find in the record any evidence or
scientific reasoning why one of ordinary skill in this art would have found the suggestion to modified the
organometallic group and/or nucleophilic group containing copolymers of Wright Embodiments I-IV
with the epoxy monomers and/or polyurethane precursors of Palazzotto with the reasonable expectation
of forming an abrasive article. See In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991), cited by appellants. We find no teaching in either combination of references which applies
to appealed claim 15. Thus, we reverse these specific grounds of rejection of appealed claims 2
through 23, bearing in mind that we have already affirmed the ground of rejection of appealed claims 2
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