Appeal No. 2006-1421
Application No. 10/434,397
successfully rebut with argument or evidence to the contrary.2
See In re Oetiker, 977 F.2d 1443, 1444, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). We hereby sustain, therefore, the examiner's
§ 102 rejection of claims 1-3, 6, 7, and 15 as being anticipated
by Lefebvre.
The § 103 Rejection
It is undisputed that Mitchnick discloses the use of a
silicon-based compound as defined by the here rejected claim for
coating particles, such as magnetic particles of the type taught
by Lefebvre (e.g., see lines 6-19 in column 1, lines 28-44 in
column 4, lines 40-59 in column 7, and lines 10-34 in column 8
of Mitchnick; also see lines 6-11 in column 1 and lines 36-67 in
column 3 of Lefebvre). The examiner concludes that:
[I]t would have been obvious to one of ordinary skill
in the art to employ the organometallic [silicon based
coating material of Mitchnick] to coat the iron-base
magnetic particles taught by Lefebvre . . . because
using this coating material the coating thickness and
2 We recognize that the appellants have discussed a "Declaration of
Gary Gwozdz" on pages 14 and 15 of the replacement Brief and that the
examiner has explained why this Declaration does not establish patentability
in the paragraph bridging pages 5 and 6 of the replacement Answer. However,
the evidence appendix of the replacement Brief expressly states that "[t]here
is no extrinsic or declaration evidence at issue in this Appeal." Consistent
with this statement is the fact that no copy of the aforementioned
Declaration is associated with the replacement Brief (or the original Brief).
In these respects, see the requirements of the pertinent regulation 37 CFR
§ 41.37(c)(1)(ix) (2004). For these reasons, we will not consider this
Declaration vis-à-vis patentability of the appealed claims.
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