Appeal No. 1999-0963 8
Application No. 08/787,189
619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re Best, 562 F.2d 1252,
1254-55, 195 USPQ 430, 433-34 (CCPA 1977). Furthermore, the discovery of a
new property even when that property is unobvious from the prior art, cannot impart
patentability to claims directed to a known composition. In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Based upon the above findings of fact
and analysis regarding the applied prior art, which disclose the preparation of substantially
stoichiometric magnetic cobalt ferrite nanoparticles in an ion exchange resin, we conclude
that the Ugelstad reference of record is sufficient to establish a prima facie case of
anticipation with respect to the claimed subject matter.
We shall also sustain the rejection under 35 U.S.C. § 103. It is well settled that
the ultimate obviousness is lack of novelty. The claims cannot have been anticipated and
not have been obvious. In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571
(CCPA 1982). Accordingly, there is no further need to inquire into the disclosure of
Ugelstad. Furthermore, we shall sustain the rejection of the claimed subject
matter over the combination of Ziolo ‘866 in view of Ziolo ‘756 and Ugelstad. The
appellants having stated that the claims should stand or fall together, and claim 1, having
been chosen as representative of the claimed subject matter and the rejection of the claim
having been affirmed over Ugelstad alone, we summarily affirm the rejection over the
combined teachings of the Ziolo references and Ugelstad. See also, In re Kronig, 539
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