Appeal No. 1996-3980
Application 08/290,125
sufficiently to have placed a person of ordinary skill in the art in possession of this composition, thus
anticipating claim 1 under § 102(b). In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990). Indeed, as seen from Maruno Example 1 and complexes No. 2 through 7 of Maruno
Table 2, Maruno Example 2 and complexes No. 15 and 18 through 21 of Maruno Table 4, and
Maruno Example 3 and Maruno Table 5, the magnetic complexes disclosed by Maruno can comprise
about 44 to 62 weight percent of polysaccharide carboxyalkyl ethers in which about 25 to 42 weight
percent of magnetic iron oxide particles of about 6 to 10 nm are dispersed, which compositions are
recovered as a powder by freeze drying. One of ordinary skill in this art would have reasonably
expected that the polysaccharide carboxyalkyl ethers and the magnetic iron oxide particles are chemical
bonded, as taught by Maruno (col. 10, lines 16-19), and that at least a portion of the ferrous chloride
used in the preparation of the complexes would form magnetite, that is, Fe O , as taught by Maruno
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(col. 4, lines 15-16). Thus, it reasonably appears that the complexes comprise at least a
polysaccharide carboxyalkyl ether as “a resin” that contains “uniformly dispersed” “nanocrystalline
particles of Fe O ” that are “bonded” thereto, wherein the “resin” and the “nanocrystalline particles of
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Fe O ” are present in certain weight percent such that the complexes are encompassed by claim 1.
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Accordingly, because the chemically bound complexes of carboxyalkyl ethers of
polysaccharides and magnetic iron oxide particles reasonable appear to be identical to the magnetic
nanocomposite compositions of claim 1, the burden falls upon appellants to establish by effective
argument and/or objective evidence that the claimed invention patentably distinguishes over this
reference with respect to . See Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58; In re Best, 562
F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977). We have reassessed the patentability
of the claimed invention encompassed by claim 1 based on the totality of the record, including all the
factual evidence of anticipation in Maruno and appellants’ arguments evidence that the reference is not
anticipatory, giving due consideration to the weight of appellants’ arguments.
We have carefully considered appellants’ arguments with respect to the difference in water
solubility and the affect on viscosity properties of aqueous mixtures between the polysaccharide
carboxyalkyl ether containing magnetic complexes of Maruno and the “ion exchange resins of the
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