Appeal No. 2006-3248 Page 5
Application No. 10/617,585
The Examiner states that the term “non-functional” recited in claim 5 is indefinite
“because the monomers cited within the Markush group contains species having
various functional groups such as phenyl, fluoro, bicyclic, polycyclic, and aromatic with
2-3 rings functional groups.” Answer, Page 3.
Appellants argue that the Examiner erroneously adopted the definition of
“functional groups” which is used in general organic chemistry. More properly,
Appellants urge, the Examiner should have defined the term as it is understood in
polymer chemistry to mean “reactive” functional groups. Brief, page 5. “Here,
crosslinkable components are reactive to crosslinking components and are therefore
functional because they react with the crosslinking components to form the crosslinked
coating during the cure phase.” Id.
In examining the claims of an application, the PTO is permitted to adopt “the
broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.” In re Morris, 127 F.3d 1048,
1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Crish, 393 F.3d 1253, 1256, 73
USPQ2d 1364, 1367 (Fed. Cir. 2004).
In light of the specification and prior art, we are persuaded by Appellants’
argument that the skilled artisan would have understood “functional” to refer to the
reactivity necessary to form the crosslinked coating. Brief, page 5. This construction is
consistent with the specification which describes “[t]he use of non-functional acrylate
monomers and functional methacrylate monomers” with respect to crosslinking.
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