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 µm 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 µm. 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 µm. 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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