Appeal No. 1996-3980
Application 08/290,125
magnetic iron oxide particles formed in Chang Example 2, while a “dark brown” color may well
characterize the presence of Fe O as appellants contend, the further treatment of the magnetic iron
2 3
oxide impregnated resin in the reference Example with two additional ion/base applications resulted in a
magnetic resin particles that are much darker in color and more magnetic as we discussed above.
Chang does disclose that the presence of magnetite does impart a “black” color to the resin. Indeed,
we find that a mixture of magnetic iron oxides would reasonably be present in the resin because of the
ferrous and ferric ions employed and Chang’s teachings that the “preferred magnetic materials are
magnetic iron oxide of the formula Fe O and Fe O ” (col. 3, lines 59-60). As pointed out by the3 4 2 3
examiner (answer, page 7), and as we discussed above, the apparent presence of at least some Fe O
3 4
would satisfy the claim limitation with respect to weight percent because only “0.001 . . . weight percent
of nanocrystalline particles of Fe O ” is required. The magnetic particles of Chang Example 2 would
3 4
thus fall within claim 1 which contains no limitation with respect to the size of the “nanocrystalline
particles of Fe O .”
3 4
With respect to appellants’ notion that the disclosed process utilizing an “Fe S intermediate” is
m n
necessary to prepare the claimed magnetic nanocomposite compositions, we find no disclosure in
appellants’ specification that this is so, and, as the examiner points out, there must be process limitations
in claim 1 directed to this process if the process is to contribute to the definition of the product claimed
therein. See generally, In re Bridgeford, 357 F.2d 679, 681-83, 149 USPQ 55, 57-58 (CCPA
1966). Furthermore, appellants’ arguments with respect to the various porous polymeric materials
taught in Chang do not patentably distinguish claim 1 from the disclosure of the reference. We again
observe that the resin in Change Example 2 is an ion exchange resin while in Chang Example 5, HEMA
was polymerized in the presence of the complexing agent EDTA. Thus, both of these porous polymeric
particles would reasonably be expected to bond with the magnetic iron oxide either chemically or
physically. Indeed, both of these porous polymeric particles would be “a resin” with respect to claim 1.
Thus, appellants’ arguments and evidence fail to convincingly demonstrate that the magnetic
nanocomposite compositions of claim 1 and the magnetic particles of Chang Examples 1, 2, 4 and 5 are
not identical or substantially identical.
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