Appeal No. 2006-2982 Page 8
Application No. 10/458,112
At the outset, we note that appellants have argued that Rizzo
expressly teaches against using particles having a particle size too small
[brief, page 4, Rizzo, ¶¶ 0033 and 0053]. We further note the examiner has
asserted that Rizzo suggests a nanoparticle [answer, page 10]. We note
that what a reference “suggests” is irrelevant to anticipation. Furthermore,
“[t]eaching away is irrelevant to anticipation.” Seachange International,
Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380, 75 USPQ2d 1385, 1398 (Fed. Cir.
2005), citing Celeritas Tech., Ltd., v. Rockwell Int’l Corp., 150 F.3d 1354,
1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998); Bristol-Myers Squibb Co. v.
Ben Venue Labs., Inc., 246 F.3d 1368, 1378, 58 USPQ2d 1508, 1515 (Fed.
Cir. 2001).
We begin our analysis by construing the recited “nanoparticle” in
accordance with the definition argued by appellants. Appellants have argued
that the claimed “nanoparticle” must be a particle having a diameter of
between about 3 nanometers to about 12 nanometers, in accordance with
the definition set forth in the instant specification at page 10, lines 21 and
22 [brief, page 4]. We note that the Court of Appeals for the Federal Circuit
has stated: “[w]hen the applicant states the meaning that the claim terms
are intended to have, the claims are examined with that meaning, in order
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