Appeal No. 1996-3980
Application 08/290,125
resin, wherein the nanocrystalline particles of Fe O are bonded to the resin and uniformly dispersed
3 4
therein.
The appealed claims as represented by claim1 are drawn to a magnetic nanocomposite2
composition comprising at least the specified weight percentage of nanocrystalline particles of Fe O
3 4
which are uniformly dispersed in and bonded to the specified weight percentage of a resin. According
to appellants, the claimed magnetic nanocomposite compositions can be used, inter alia, in the
preparation of dry and liquid magnetic developer formulations (specification, e.g., pages 5-6).
The references relied on by the examiner are:
Chang et al. (Chang) 4,873,102 Oct. 10, 1989
Maruno et al. (Maruno) 5,204,457 Apr. 20, 1993
Ziolo (Ziolo ‘756) 5,322,756 Jun. 21, 1994
Appellants have relied on the following reference in their brief:
Ziolo (Ziolo ‘866) 4,474,866 Oct. 2, 1984
The examiner has advanced the following grounds of rejection on appeal: claims 1 through 9,
11, 20 through 22 and 24 through 27 are rejected under 35 U.S.C. § 112, first paragraph, written
description requirement; claim 4 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which applicant
regards as the invention; claims 1 through 3 and 5 through 9, 11 and 24 through 27 are rejected under
35 U.S.C. § 102(b) as being anticipated by Maruno; claims 1 through 9, 11 and 24 through 27 are
rejected under 35 U.S.C. § 102(b) as being anticipated by or, in the alternative, under 35 U.S.C. §
103 as obvious over Chang; and claims 1 through 9, 11 and 24 through 27 are rejected under 35
U.S.C. § 103 as being unpatentable over Chang in view of Ziolo ‘756. 3
We affirm the ground of rejection under § 112, first paragraph, written description requirement,
with respect to claim 4 and the grounds of rejection based on prior art. We reverse the ground of
2Appellants state in their brief (page 4) that appealed claims 1 through 9, 11 and 24 through 27
constitute a single group of claims. Thus, with respect to these appealed claims, we decide this appeal
based on appealed claim 1. 37 CFR § 1.192(c)(7) (1995).
3The examiner has withdrawn the grounds of rejection under § 102(b) based on “JP 0.015,439” and
under § 103 based on Unebayashi in view of “JP 0.015,439.” See answer, page 9, and the advisory
action of December 1, 1995 (Paper No. 10; page 4).
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