Appeal No. 1997-0534
Application 08/171,904
subject of a claim when the reference discloses every feature
of the claimed invention, either explicitly or inherently (see
Hazani v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d
1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388
(Fed. Cir. 1984)).
We take the exemplary claim 1. After considering the
Examiner’s position [Answer, pages 4 and 7 to 9] and
Appellants’ arguments [Brief, pages 7 to 8], we are persuaded
by Appellants that Wijeyesekera does not show all the
limitations recited in claim 1. For example, Wijeyesekera
does not anticipate the superconductor particles and the
superparamagnetic particles to be of the claimed different
sizes. Furthermore, we have reviewed the declaration by
Goretta (Declaration), attached as Appendix B to the brief.
We share the Examiner’s concern about Goretta’s assertion
[Declaration, page 2] that the “teaching of 5.67% -82 weight
percent (converted from their 5-80 volume percent)” would not
lead him to use the claimed 0.1-0.3 weight percent to achieve
the unexpected improvement in electrical properties because
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