Appeal No. 2004-0778
Application No. 10/172,933
The only argued distinction of the appealed claims over
Deetz relates to mixing iron particles only with the paint as
required by the claims before us by virtue of the closed
independent claim language “consisting of the steps of.”
According to the appellant, Deetz’s corresponding mixing step
involves a wetting agent or emulsifier to assist in dispersing
the iron particles in the paint. Thus, it is the appellant’s
basic position that the Deetz patent contains no teaching or
suggestion of mixing iron particles only with the paint.
On the other hand, it is the examiner’s fundamental position
that Deetz teaches or at least would have suggested mixing iron
particles only in the paint via the disclosure at lines 59-63 in
column 4 wherein patentee teaches adding such particles directly
to paint followed by a teaching of preferred embodiments wherein
a wetting agent or emulsifier is used to assist in dispersing the
particles. The appellant responds to the examiner’s position by
arguing that this column 4 disclosure is inconsistent with the
reference as a whole which, in the appellant’s view, “actually
teaches away from using only iron particles” (reply brief, pages
3-4). We cannot agree with the appellant.
Patentee’s column 4 teaching that iron particles may be
added directly to paint is explicit and unambiguous. While this
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