Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as anticipated by or, in
the alternative, under 35 U.S.C. § 103 as obvious over Klaveness, Pilgrimm and
Groman.
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with the appellants that the aforementioned rejections under
35 U.S.C. § 102 and U.S.C. § 103 are not well founded. Accordingly, we do not
sustain the examiner's rejections.
The Rejection under Section 102--Anticipation
In order for a claimed invention to be anticipated under 35 U.S.C. § 102(b), all of
the elements of the claim must be found in one reference. See Scripps Clinic &
Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,
1010 (Fed. Cir. 1991).
The examiner appears to rely upon a combination of three references to reject
the claims on the grounds of anticipation. That rejection and its reliance on three
combined references is clearly improper. As for consideration of each reference
individually, the examiner concedes that the references, “do not specifically set forth
all of the claimed designated functional limitations.” See Answer, page 4. Functional
limitations as exemplified by the particle size, specific surface area, and the colloidal
state of the superparamagnetic particles, the molecular weight and charge number of
the polyelectrolyte are elements of the claim which must be all present in a single
reference. The examiner’s position is that the references are presumed to contain,
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