Appeal No. 1996-3980
Application 08/290,125
However, we cannot agree with the examiner that this ground of rejection extends to
claims 1 through 3 and 5 through 9, 11, 20 through 22 and 24 through 27 by virtue of the recitation of
“a resin” in claims 1 and 20 (answer, page 3). Indeed, the fact that a claimed genus may encompass
species not described in the original application does not established that, prima facie, the claimed
genus invention was not described to one of ordinary skill in this art by the original application at the
time it was filed. Compare In re Smith, 458 F.2d 1389, 1394, 1395, 173 USPQ 679, 683 (CCPA
1972). Accordingly, we reverse the ground of rejection under § 112, first paragraph, written
description requirement, with respect to claims 1 through 3 and 5 through 9, 11, 20 through 22 and 24
through 27.
We further fail to find that the Markush format employed in claim 4 renders that claim indefinite
because the recitation at line 7 of claim 4, pointed to by the examiner, is plainly a Markush group
defining a member of the broader Markush group encompass by the claim. Thus, the comma desired
by the examiner would render the claim indefinite. Accordingly, we reverse the ground of rejection of
claim 4 under § 112, second paragraph.
We begin our consideration of the issues involved with the grounds of rejection based on prior
art in this appeal by determining the scope of the magnetic nanocomposite compositions encompassed
by appealed claim 1, mindful that the terms of this claim must be given the broadest reasonable
interpretation consistent with appellants’ specification as it would be interpreted by one of ordinary skill
in this art. In re Morris, 127 F.3d 1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). It is clear from
the use of the transitional term “comprising” that the magnetic nanocomposite composition must contain
at least “about 0.001” weight percent of “nanocrystalline particles of Fe O ” that are “bonded to” and
3 4
“uniformly dispersed” in at least “about 40” weight percentage of “a resin,” and can include addition
ingredients. See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d
1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning containing
at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03
(CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any other monomer may
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