Appeal No. 95-2644
Application 07/818,852
we find that we cannot sustain this rejection for the reasons set forth in appellants’ brief.
The Answer (see page 6) does not give any weight to the thickness of the
amorphous, aluminum hydrous oxide coating on the magnetic particles, or to the diameter
or the shape of the magnetic particles. Since it is settled that every limitation of a claim
must be given effect, see In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791
(CCPA 1974), the examiner should have determined whether these limitations would have
been obvious to one of ordinary skill in this art. Nowhere has the examiner sustained his
burden to make this determination. Moreover, assuming that the examiner had shown that
the combined references would have rendered obvious these limitations, the combined
references still do not make out a prima facie case of obviousness, i.e., the references fail
to show that the colloidal particles have a positive surface charge.
We also note that the examiner urges that if the thickness of the amorphous,
aluminum hydrous oxide coating on the magnetic particles were given patentable weight,
then it would have been obvious for one of ordinary skill to vary the thickness in
order to optimize the dispersability of the magnetic powder. Thus, the examiner considers
that the thickness of the amorphous, aluminum hydrous oxide coating is a result
determinative variable. However, the examiner has submitted no evidence to show that
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