Appeal No. 2006-2982 Page 6
Application No. 10/458,112
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58
USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation
v. Genentech, Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir.
1991). Anticipation of a patent claim requires a finding that the claim at
issue “reads on” a prior art reference. Atlas Powder Co. v. Ireco, Inc., 190
F.3d 1342, 1346, 51 USPQ2d 1943, 1945 (Fed Cir. 1999) (“In other words, if
granting patent protection on the disputed claim would allow the patentee to
exclude the public from practicing the prior art, then that claim is
anticipated, regardless of whether it also covers subject matter not in the
prior art.”) (internal citations omitted).
Claims 1-4, 8, 9 and 11-17 (Rizzo)
I(a). We consider first the examiner’s rejection of claims 1-4, 8, 9 and 11-
17 as being anticipated by Rizzo. We separately address claims 29 and 30
as being anticipated by Rizzo infra. Since Appellants’ arguments with
respect to this rejection have treated these claims as a single group which
stand or fall together, we will consider independent claim 1 as the
representative claim for this rejection. See 37 C.F.R. § 1.37(c)(1)(vii)(2004).
Appellants argue that Rizzo does not teach nor suggest a
superparamagnetic “nanoparticle” as defined in the instant invention [brief,
page 4]. Appellants argue that the instant specification (at page 10, lines
21-22) defines a nanoparticle as a particle having a diameter of between
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