Appeal No. 1996-3980
Application 08/290,125
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation and of obviousness found in Chang with appellants’ countervailing
evidence of and argument for no anticipation in fact and nonobviousness and reach the finding and
conclusion that the claimed invention encompassed by appealed claims 1 through 3 and 5 through 9, 11
and 24 through 27 are anticipated as a matter of fact under § 102(b) and would have been
obvious as a matter of law under § 103. Therefore, we affirm this ground of rejection.
Finally, we consider the ground of rejection of claim 1 under § 103 as being unpatentable over
the combined teachings of Chang and Ziolo ‘756. The examiner contends that one of ordinary skill in
the art would have been motivated to modify Chang by employing other known ion exchange resins in
place of those disclosed in Chang and to utilize the art recognized nanocrystalline Fe O as suggested
3 4
by Ziolo ‘756 in the reasonable expectation of obtaining magnetic particles. See generally, In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). As evidence of
nonobviousness, appellants submit that “the nanocomposite compositions of the present invention were
not, or could not be, obtained without the use of the alkali metal sulfide salt as described [in
specification] Comparative Example 1 on page 19, . . . wherein there is disclosed a control experiment
which produced a product which was believed to be identical to the Fe O product prepared by Ziolo
2 3
‘866” (brief, pages 9-10). On this basis, appellants allege that “the compositions of the present
invention . . . could not be obtained by following the teachings of Chang or Ziolo ‘756” and that the
“use of the alkali metal sulfide was shown to be critical, and unexpectedly” resulted in the claimed
compositions.
We have carefully considered specification Comparative Example 1 and find no evidence
therein which would reasonably support appellants’ contention that the claimed compositions cannot be
obtained by the process disclosed in Chang. Furthermore, as we pointed out above, we have found no
disclosure in appellants’ specification which establishes that the disclosed process utilizing an “Fe S
m n
intermediate” is necessary to prepare the claimed magnetic nanocomposite compositions. Accordingly,
appellants’ arguments are entitled to little if any weight.
Accordingly, based on our consideration of the totality of the record before us, we have weighed
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