Appeal No. 2006-2982 Page 17
Application No. 10/458,112
two electrodes (e.g. electrodes 101 and 102 and a single magnetic
nanoparticle 103 therebetween) [brief, page 6; see Sun col. 4, lines 35-37,
fig. 1]. Appellants further argue that Sun does not teach a magnetic film
comprising superparamagnetic particles on “at least one surface thereof,” as
claimed [brief, page 6].
At the outset, we note that independent claims 1, 22, 25 and 38 each
recite a “magnetic film” and a superparamagnetic particle (or particles) on
“at least one surface thereof.”
We begin our analysis by noting that the examiner fails to respond
directly to appellants’ argument that the magnetic film limitation is not found
within the Sun reference. The examiner merely asserts that he/she
“believes” that Sun discloses this limitation [answer, page 12, ¶2]. After
carefully reviewing the sections of the Sun reference relied upon by the
examiner, we find that the examiner, as finder of fact, has not fully
developed the record so as to adequately explain exactly how the instant
claimed “magnetic film” reads upon Sun’s electrodes 101 and 102 (fig. 1).
However, we find that Sun explicitly discloses “magnetic thin film elements”
in the “Background of the Invention” section in the context of a discussion of
Magnetic Random Access Memory (MRAM) technology [col. 1, line 19]. We
further note that Sun discloses “thin film electrodes” at col. 2, line 46
[emphasis added].
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