Appeal No. 1996-3980
Application 08/290,125
be present, because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”).
We find that there is no specified limit on the size of the nanocrystalline particles of Fe O in claim 1
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and, on this record, we are not prepared to read the limitation of “a volume average particle size range
of from about 1.0 to about 1,000 nanometers” disclosed with respect to this term at page 7 of the
specification, into claim 1. Compare the definition of “nanosized” as “any particulate having dimensions
of between about 1 and about 100 nanometers” at page 12 of the specification and the limitation in
appealed claim 2 that the “nanocrystalline particles of Fe O particles have a particle size range of from
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about 10 to about 100 nanometers.” In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978), citing In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969) (“We have
consistently held that no ‘applicant should have limitations of the specification read into a claim where
no express statement of the limitation is included in the claim.’”).
Furthermore, we find that one of ordinary skill in this art would interpret the term “a resin” in
light of the plain language of the claim and of the specification as having the meaning of polymeric
materials in which the nanocrystalline particles of Fe O can be “uniformly dispersed” and “bonded.”
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With respect to the term “bonded,” we do not find this term to be specifically defined in the
specification. There is disclosure in the specification which suggests that the nanocrystalline particles of
Fe O are chemically bound to an “ion exchange resin,” but one of ordinary skill in the art would not
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find the term “a resin” in claim 1 to be limited to this specific resin, as we discussed above, and we
decline to read the term “a resin” in claim 1 as being limited to an ion exchange resin. Compare the
limitation in appealed claim 3 that “said resin is an ionic exchange resin.” Priest, supra. We note that
appellants suggest in argument that the nanocrystalline particles of Fe O are “in intimate association
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(chemically or physically)” with ion exchange resin (brief, pages 6 and 9). Accordingly, we interpret the
term “bonded” as including either a chemical or physical “bond” between the “nanocrystalline particles
of Fe O ” and “a resin.”
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In comparing claim 1 as we have interpreted it above with Maruno, we agree with the
examiner’s finding that this reference anticipates claim 1 because, prima facie, all of the elements of the
claimed magnetic nanocomposite composition encompassed by claim 1 are described in Maruno
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