Appeal 2007-2062
Application 10/360,263
ISSUES ON APPEAL
Claims 1-5, 7-23, and 25-38 stand rejected under 35 U.S.C. § 102(e)
as anticipated by Schneider (Answer 3).
Claims 1-38 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Schneider (Answer 4).
Appellants contend that the end points of the claimed particle size
range and the particle size range of Schneider do not overlap, i.e., “about 0.1
micron [100 nm]” does not read on the claimed “less than 100 nm” (Br. 3;
Reply Br. 1).2
Appellants contend that even if “about 0.1 micron” did overlap with
the claimed end point, there is no description in the reference to Schneider
with sufficient specificity to anticipate the claim, citing Atofina v. Great
Lakes Chemical Corp., 441 F.3d 991, 1000, 78 USPQ2d 1417, 1424 (Fed.
Cir. 2006) (Br. 3-4; Reply Br. 1).
Appellants contend that the express recital in the claims that the
particles are substantially free of hydroxyl functional groups is not taught by
Schneider (Br. 4).3
2 Appellants admit that Schneider discloses, in addition to the particles
previously discussed, the incorporation of nanoparticles clearly within the
size range recited in claim 1 on appeal (Br. 4). However, Appellants
contend that Schneider does not disclose that these nanoparticles are
substantially free of OH functional groups on the surface of the particles
(id.).
3 In footnote 1 on page 4 of the Brief, Appellants contend that Mr. Schneider
stated that it would be apparent to those skilled in the art that the particles in
the Schneider reference will have hydroxyl functional groups on the surface
of the particle. Appellants further contend that this fact is so well known
that a signed Declaration is unnecessary (Reply Br. 2).
3
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Last modified: September 9, 2013