Appeal No. 95-1622
Application 07/890,593
through 14, 16 and 18 through 21 as being anticipated under § 102(b) or obvious under § 103 over
Wright.
We also reverse the ground of rejection of appealed claims 24 and 25 under 35 U.S.C. §
103 as being unpatentable over Printed Circuits Handbook further in view of Wright. The examiner
contends that one of ordinary skill in the art of printed circuits would have used the “organometallic
photoinitiator as disclosed by Wright” in the process of photopolymerization in the preparation of a
printed circuit. Appellants submit that the examiner’s rejection does not apply to appealed claims 24
and 25 which are not drawn to methods of preparing printed circuits (principal brief, page 19; reply
brief, pages 8-9). We agree with the examiner that the articles prepared with the methods of appealed
claims 24 and 25 do indeed comprise printed circuits. However, we again fail to find in the record any
evidence or scientific reasoning why one of ordinary skill in this art would have found the suggestion in
the combination of references to combine the organometallic coatings of Wright which are crosslinked
via nucleophilic groups with copper substrates that are free of basic reactive sites in the processes
disclosed in Printed Circuits Handbook (secs. 11.9.2-11.10) with the reasonable expectation of
obtaining the claimed method. Thus, the examiner has not carried the burden of making out a prima
facie case of obviousness. Vaeck, supra. Accordingly, we reverse this specific ground of rejection of
appealed claims 24 and 25, bearing in mind that we have entered 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 finally consider the ground of rejection of appealed claims 2 under 35 U.S.C. §
102(b) as being anticipated by Bailey. We have carefully considered Bailey and based thereon find that
we agree with the examiner (answer, pages 4-6 and 11-13) that appealed claim 2 is anticipated by
“compound 51” of Bailey (page 140). Contrary to appellants’ position (reply brief, page 7; see also
principal brief, pages 14-16 and 17-18), “compound 51” is an article which is an organometallic dimer
immobilized on an inorganic substrate that is formed by the reaction of the functionalized organometallic
group with a polymeric substrate that has basic reactive sites (appellants’ specification, page 19, lines 3-
4) by exposure to thermal energy (Bailey, e.g., pages 139-40 and 138-39). Accordingly, we affirm this
ground of rejection.
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