Appeal No. 2005-0157
Application No. 09/977,363
of § 103 in view of the applied prior art. Accordingly, we will
sustain the examiner’s rejections.
Appellants do not dispute the examiner’s factual
determination that JP ‘609, like appellants, discloses a process
for making a rare earth metal-based permanent magnet by forming a
metal oxide film containing carbon on the surface of the magnet
by a sol-gel process. Appellants’ principal contention is
that JP ‘609 fails to teach or suggest a metal compound in the
recited concentration of from 0.1 wt% to 20 wt% in a sol solution
(claim 9), or the amount of carbon specified in claim 16 in the
sol solution.
The examiner acknowledges that JP ‘609 does not expressly
disclose the claimed concentrations of metal compound and carbon
in the sol solution (see sentence bridging pages 3 and 4 of
Answer). However, it is well settled that where patentability is
predicated upon a change in the condition of a prior art
composition, such as a change in concentration or the like, the
burden is on the applicant to establish with objective evidence
that the change is critical, i.e., it leads to a new unexpected
result. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
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