Ex parte SODA et al. - Page 3







             independent composition and method claim respectively, and claim 4 as representative                 
             of the claimed subject matter and limit our consideration thereto.  37 CFR  1.192                   
             (c)(7)(1995).                                                                                        


             The Rejection under 35 U.S.C.  102(b)                                                               
             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.  Scripps Clinic &                          
             Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001,                              
             1010 (Fed. Cir. 1991).                                                                               
             The claimed subject matter requires a composition having a spherical particle                        
             shape,  an average particle size of 25 m or less and a tap density ratio of 50 - 60%.               
             We find that  Kiyota discloses a spherical iron powder having an average particle size               
             from 2 to 6 m.  See Abstract, and column 2, lines 20-21.  There is no disclosure in                 
             Kiyota of the requisite tap density ratio of the claimed subject matter.  Nonetheless, it            
             is the examiner’s position that appellants’ own Declaration, filed on March 26, 1997                 
             teaches that water atomized particles of 7 microns or larger possess the requisite                   
             tap density ratio of the claimed subject matter.  See Answer, page 5.                                
             In our view, we find that Kiyota prepares spherical iron powder having an average                    
             particle size of 7.1 m.  See Table 1, column 5.  The issue before us is whether this                
             iron powder having the requisite spherical shape and particle size, also possesses                   
             the requisite tap density ratio.  The Declaration submitted by appellants under 37 CFR               
              1.132 discloses the preparation of iron particles prepared according to the                        
             disclosure of Kiyota.  See Declaration, page 1.  Hence, it is reasonable to conclude                 

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