Appeal No. 1996-3980
Application 08/290,125
application of the ions followed by treatment with a base, the resin particles first “became much darker
and more magnetic” and then “became easily attractable by a magnet” (col. 6, line 68, to col. 7, line 6).
According to Chang, the magnetic oxide particles formed inside the pores of the resin are “fine-grained,
non-clustered and . . . evenly distributed” (col. 3, lines 1-13). The examiner also reasons that because
Chang teaches that the size of the resin particles can be “as small as 100 Angstroms” (col. 4, lines 38-
47), that is, 10 nanometers, the size of the magnetic particles resident in the pores of the resin particles
can be smaller than 10 nanometers. Thus, it reasonably appears that the magnetic particles formed in
the pores of the resin of Chang Example 2 would include nanosized magnetite, that is, Fe O . Indeed,
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Chang teaches that the presence of magnetite turns the resin “deep black” (col. 6, line 20). Thus it
would further reasonably appear that in Chang Example 2, the darkening of the resin upon successive
applications of ions and base indicates the further formation of nanosized Fe O . It would also
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reasonably appear from Chang that the Fe O would be bonded to the resin at least physically if not
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also chemically.
We observe in this respect that in Chang Example 1, the application of ferrous and ferric ions to
polystyrene microspheres was followed by removal of excess ions prior to treatment of the at least
physically bonded ions with a base at which time “the beads turned black and exhibited magnetic
properties” (col. 6, lines 52-57), thus indicating the presence of magnetite which from ions physically
retained in the resin. A similar “black” resin was prepared in Change Example 4. In Chang Example 5,
the resin of Chang Example 4 was modified during polymerization by the presence of the complexing
agent EDTA (see col. 4, lines 30-37) and treated with ions and base as in Example 4 to provide a
“product with a higher magnetic content” (col. 8, lines 27-30).
Based on this evidence in Chang, it appears to us that there is reasonable basis to believe that,
prima facie, the magnetic nanocomposite compositions of claim 1 and the magnetic particles of Chang
Examples 1, 2, 4 and 5 are identical or substantially identical. Thus, the burden falls upon appellants to
establish by effective argument and/or objective evidence that the claimed invention patentably
distinguishes over this reference, whether the rejection is considered to be based on 35 U.S.C. § 102
or 35 U.S.C. § 103. Spada, supra; Best, supra. We have reassessed the patentability of the claimed
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