Ex Parte Bajjuri et al

Patent Trial and Appeal Board

Apr 24, 2017

13454054 (P.T.A.B. Apr. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/454,054 04/23/2012 Krishna M. Bajjuri ARC920120009US1 8601
91031 7590
CANAANLAW, P.C.
PO Box 1860
Los Gatos, CA 95031-1860
04/26/2017 EXAMINER
REDDY, KARUNA P
ART UNIT PAPER NUMBER
1764
NOTIFICATION DATE DELIVERY MODE
04/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
karen@canaanlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNA M. BAJJURI, DAVID BERMAN, QIU DAI,
PIERRE-OLIVIER JUBERT, HAREEM T. MAUNE, and
ALSHAKIM NELSON
Appeal 2015-007172
Application 13/454,054
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision rejecting claims 1, 3—6, 8—19, and 33—35.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is International Business
Machines Corporation (IBM). Appeal Br. 3.
2 Pending claims 20—26 and 28—32 have been withdrawn from consideration
and are not before us on appeal. Compare Final Act. 3 with Appeal Br.
Claims App’x. Claims 2, 7, and 27 are canceled.
Appeal 2015-007172
Application 13/454,054
We AFFIRM-IN-PART.3
STATEMENT OF THE CASE
The invention relates to water-soluble block copolymer-magnetic
nanoparticle compositions having a nonzero net magnetic moment in the
absence of an applied magnetic field at ambient temperatures. Spec. 11.
Appellants disclose that the water-soluble block copolymer may be in direct
contact with the magnetic nanoparticle. Id. 19. In particular, Appellants
disclose that the composition comprises a polymer complex including the
magnetic nanoparticle and the water-soluble block copolymer bound to the
surface of nanoparticle. Id. 6 and 9.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A composition comprising a polymer complex comprising:
(i) a ferrimagnetic nanoparticle; and
(ii) a water-soluble block copolymer in direct contact
with the ferromagnetic nanoparticle,
wherein, in the absence of an applied magnetic field, the
ferrimagnetic nanoparticle has a nonzero net magnetic moment
at ambient temperatures.
GROUNDS OF REJECTION
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection:
3 Our decision refers to the Specification (Spec.) filed April 23, 2012, the
Examiner’s Final Office Action (Final Act.) dated October 20, 2014,
Appellants’ Appeal Brief (Appeal Br.) filed February 10, 2015, the
Examiner’s Answer (Ans.) dated June 3, 2015, and Appellants’ Reply Brief
(Reply Br.) filed July 28, 2015.
2
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1. Claims 1, 3, 5, 6, and 12 under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by Baldi;4
2. Claims 1, 3, 5, 6, and 14 under 35 U.S.C. § 102(b) (pre-AIA) as
anticipated by Skaff;5
3. Claims 1,3, 8—13, 17, and 18 under 35 U.S.C. § 102(b) (pre-
AIA) as anticipated by Gao,6 as evidenced by the
Superparamagnetism Wiki7 and the Ferrimagnetism Wiki;8 9 *
4. Claim 16 under 35 U.S.C. § 103(a) (pre-AIA) as unpatentable
over Gao, as evidenced by the Superparamagnetism and
Ferrimagnetism Wikis, and further in view of Baldi;
5. Claims 14, 15, and 19 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Gao, as evidenced by the
Superparamagnetism and Ferrimagnetism Wikis, and further in
view of Labhasetwar;9,10
6. Claims 1, 3—6, 12, and 14 under 35 U.S.C. § 103(a) (pre-AIA)
as unpatentable over Lowery11 in view of Skaff; and
7. Claims 33—35 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Lowery in view of Skaff, and further in view
of Guiying12 and Baldi.13
4 WO 2004/071386 A2, published August 26, 2004.
5 US 2009/0092554 Al, published April 9, 2009.
6 US 2008/0203351 Al, published August 28, 2008.
7 Superparamagnetism, http://en.wikipedia.org/wiki/Superparamagnetism,
accessed October 13, 2014 (“Superparamagnetism Wiki”).
8 Ferrimagnetism, http://en.wikipedia.org/wiki/Ferrimagnetism, accessed
October 13, 2014 (“Ferrimagnetism Wiki”).
9 As Appellants recognize (Appeal Br. 18), although the Examiner’s
statement of rejection cites to 35 U.S.C. § 102(b) indicating that claims 14,
15, and 19 are anticipated, the statement further indicates that patentability is
negatived by Gao, as evidenced by the Superparamagnetism and
Ferrimagnetism Wikis, and further in view of Labhasetwar. Ans. 8.
Moreover, as Appellants note, the conclusion of this rejection is a conclusion
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ANALYSIS
Rejection 1: Anticipation by Baldi
The Examiner finds Baldi teaches microcapsules whose structure may
comprise biodegradable polymers such as block copolymers of PLGA and
polyethylene glycol (PEG) which contain and, therefore, are in direct contact
with magnetic nanoparticles. Ans. 2. In other words, because the
microcapsules comprising the block copolymers are loaded/encapsulated
with magnetic nanoparticles, the Examiner finds it is implicit that there is
direct contact between the magnetic nanoparticles and the block copolymers.
Id. at 10. In addition, the Examiner finds Baldi teaches these magnetic
nanoparticles may be FesCL and CoFe2C>4, which the Examiner finds are
inherently ferrimagnetic nanoparticles. Id. at 2 and 11 (directing attention to
Ferrimagnetism, which teaches that FesCL is a ferrimagnetic material with
unequal opposing moments yielding a spontaneous magnetization). Given
this latter finding, the Examiner finds that Baldi’s magnetic nanoparticles are
of obviousness. Id. at 8—9. We, therefore, reflect the correct statement of
this rejection above and hold the Examiner’s error as harmless.
10 US 2007/0264199 Al, published November 15, 2007.
11 WO 2010/002479 Al, published January 7, 2010. The Examiner relies
on, without objection, the English equivalent document, US 2011/0275985
Al, published November 10, 2011.
12 Guiying Li, et al., Self-Assembly of Thermo- and pH-Responsive
Poly(acrylic acid)-6-poly(N-isopropylacrylamide) Micelles for
Drug Delivery, Journal of Polymer Science: Part A: Polymer Chemistry,
Vol. 46, 5028-5035 (2008).
13 As Appellants recognize (Appeal Br. 17), this rejection statement
inadvertently omits Baldi even though the body of this rejection includes a
discussion of, and reliance on, Baldi. Ans. 7—8. We, therefore, reflect the
correct statement of this rejection above and hold the Examiner’s error as
harmless.
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the same as Appellants’, and would have a non-zero net magnetic moment at
ambient temperatures in the absence of an applied magnetic field. Id. at 2.
Appellants argue Baldi fails to teach or suggest, inter alia, that its
magnetic nanoparticles are ferrimagnetic as defined in the Specification, i.e.,
that the nanoparticles have a nonzero net magnetic moment in the absence of
an applied magnetic field. Appeal Br. 11. The Examiner responds that
Baldi teaches FesCF and CoFe204, which the Examiner finds are inherently
ferrimagnetic, and also finds that Fe^Cf is the oldest known ferrimagnetic
material, citing the Ferrimagnetism Wiki. Ans. 11.
Appellants’ arguments are persuasive of reversible error. A claim is
anticipated only where “each and every limitation is found either expressly
or inherently in a single prior art reference.” Celeritas Techs., Ltd. v. Rock­
well Inti. Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). “[A] prior art
reference without express reference to a claim limitation may nonetheless
anticipate by inherency.” In re Omeprazole Patent Litigation, 483 F.3d
1364, 1373 (Fed. Cir. 2007). In general, a limitation is inherent “if it is the
‘natural result flowing from’ the explicit disclosure of the prior art.”
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003)
(quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir.
2001)). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)).
Here, the Examiner has not established on this record that Baldi’s
magnetic nanoparticles are ferrimagnetic and exhibit ferrimagnetic behavior.
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Appellants define the term “ferrimagnetic nanoparticle(s)” as “magnetic
particles that in the absence of an applied magnetic field, have a nonzero net
magnetic moment at a given temperature.” Spec. 131. Ferrimagnetism
Wiki, cited by the Examiner, similarly states “a ferrimagnetic material is one
in which the magnetic moment of the atoms on different sublattices are
opposed . . ., the opposing moments are unequal and a spontaneous
magnetization remains.” In contrast, as Appellants assert (Appeal Br. 11),
superparamagnetic particles have a zero net magnetic moment at a given
temperature. See Superparamagnetism Wiki. Indeed, in sufficiently small
nanoparticles, particles made of ferrimagnetic material that would otherwise
have had ferrimagnetic properties become superparamagnetic, wherein
magnetization can randomly flip direction, such that their apparent net
magnetization is zero. Id. In addition, as Appellants contend, none of
Baldi’s disclosures of magnetic nanoparticles refers to nanoparticles having
ferrimagnetic properties.
We note that, other than identify two of Baldi’s materials, FesCE and
CoFe204, as ferrimagnetic materials, the Examiner does not otherwise
support the inherency finding that Baldi’s nanoparticles would exhibit
ferrimagnetic properties. However, the record establishes that ferrimagnetic
materials such as FesCE and CoFe2C>4 may become superparamagnetic and
have an apparent zero magnetic moment when the particles are sufficiently
small. Thus, the Examiner’s finding that Baldi’s Fe^CE and CoFe2C>4
nanoparticles must have a nonzero magnetic moment because they are
known ferrimagnetic materials and are the same materials as used by
Appellants lacks sufficient support in the record. Given Appellants’
definition of “ferrimagnetic nanoparticles” and the claim recitation that the
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nanoparticles possess a nonzero magnetic moment in the absence of a
magnetic field, we cannot say that the Examiner has established that Baldi’s
magnetic nanoparticles necessarily possess a nonzero magnetic moment in
the absence of a magnetic field.
It follows, therefore, that we will not sustain the Examiner’s
anticipation rejection based on Baldi.
Rejection 2: Anticipation by Skaff
The Examiner finds Skaff teaches encapsulated contract agents which
read on the direct contact of claim 1. Ans. 3. In particular, the Examiner
finds that magnetic nanoparticles dissolved in methyl chloride are added to a
triblock copolymer, wherein the magnetic nanoparticles may be FesCE and
CoFe204 which read on ferrimagnetic nanoparticles. Id. The Examiner
finds that because the magnetic nanoparticles are encapsulated with the
triblock copolymer, such indicates direct contact between the copolymer and
the nanoparticles. Id. at 12.
Appellants argue Skaff fails to teach or suggest, inter alia, that the
contrast agents, e.g., magnetic nanoparticles, are ferrimagnetic as defined in
the Specification, i.e., that the nanoparticles have a nonzero net magnetic
moment in the absence of an applied magnetic field. Appeal Br. 11.
Instead, Appellants contend, all of Skaff s references to magnetic materials
are directed to superparamagnetic materials. Id. at 12. The Examiner
responds that Skaff teaches FesCE, which is the oldest known ferrimagnetic
material, citing the Ferrimagnetism Wiki. Ans. 12. However, Appellants
define the terms “ferrimagnetic nanoparticle(s)” and “ferromagnetic
nanoparticles” as “magnetic particles that in the absence of an applied
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magnetic field, have a nonzero net magnetic moment at a given
temperature.” Spec. 131. Ferrimagnetism Wiki, cited by the Examiner,
similarly states “a ferrimagnetic material is one in which the magnetic
moment of the atoms on different sublattices are opposed . . ., the opposing
moments are unequal and a spontaneous magnetization remains.” In
contrast, as Appellants assert (Appeal Br. 11), superparamagnetic particles
have a zero net magnetic moment at a given temperature. See
Superparamagnetism Wiki. Indeed, as explained above, in sufficiently small
nanoparticles, particles that would otherwise have been ferrimagnetic or
ferromagnetic become superparamagnetic, wherein magnetization can
randomly flip direction, such that their magnetization appears to be zero. Id.
In addition, as Appellants contend, each of Skaff s disclosures of magnetic
nanoparticles refers to superparamagnetic materials, including FesCE. See
Skaff 240, 242, and 243, each citing non-patent literature referencing
superparamagnetic colloids and nanoparticles. Accordingly, on this record,
we are persuaded that the Examiner has not established that the Fe^Cf
nanoparticles contemplated by Skaff exhibit ferrimagnetic properties as
required by claim 1. It follows, therefore, that we will not sustain the
Examiner’s anticipation rejection based on Skaff.
Rejection 3: Anticipation by Gao, as evidenced by the Superparamagnetism
and Ferrimagnetism Wikis
The Examiner finds Skaff teaches biocompatible superparamagnetic
nanocrystals produced from Fe(acac)3 and water-soluble block copolymer of
PEG-b-poly(acrylic acid). Ans. 3—A. In particular, the Examiner finds that
magnetic nanoparticles dissolved in methyl chloride are added to a triblock
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copolymer, wherein the magnetic nanoparticles may be Fe304 and CoFe2C>4
which read on ferrimagnetic nanoparticles. Id. The Examiner finds that
because the nanocrystals are superparamagnetic, which is a form of
magnetism appearing in small ferrimagnetic nanoparticles, and because
FesCE is a known ferrimagnetic material, Gao’s magnetic nanoparticles are
the same as the present invention and have a non-zero net magnetic moment
at ambient temperatures in the absence of an applied magnetic field. Id. at 4.
Appellants argue that Gao teaches the magnetic nanoparticles are
either paramagnetic, superparamagnetic, or ferromagnetic, but fails to teach
ferrimagnetic nanoparticles. Appeal Br. 12. Appellants further contend that
the Examiner’s citation to the Ferrimagnetism and Superparamagnetism
Wikis is improper as Appellants have defined “ferrimagnetic nanoparticle”
in their Specification which distinguished between ferrimagnetic
nanoparticles and superparamagnetic nanoparticles. Id. at 12—13.
Initially, we find no incongruence between Appellants’ disclosure,
specifically their definition of “ferrimagnetic nanoparticles,” and the cited
Ferrimagnetism and Superparamagnetism Wikis. Appellants describe
superparamagnetic nanoparticles as magnetic nanoparticles with a magnetic
dipole moment that flip randomly at room temperature. Spec. 12.
Superparamagnetism Wiki also describes superparamagnetism as occurring
in small ferromagnetic and ferrimagnetic nanoparticles in which
magnetization flips randomly under the influence of temperature.
Appellants describe ferrimagnetic and ferromagnetic nanoparticles as having
a permanent magnetic dipole moment at a given temperature in the absence
of an applied magnetic field. Spec. 12. The Ferrimagnetism Wiki also
describes these materials as having unequal opposing moments in which a
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spontaneous magnetization remains. Appellants define “ferrimagnetic
nanoparticles” as “magnetic particles that in the absence of an applied
magnetic field, have a nonzero net magnetic moment at a given
temperature.” Spec. 131. There is no inconsistency between this definition
and the cited Wikis, especially because the Superparamagnetism Wiki
teaches that a material exhibiting ferrimagnetic behavior can exhibit
superparamagnetic behavior when sufficiently small such that the particle is
composed of a single magnetic domain. Thus, the same material, e.g.,
Fe304, can exhibit both ferrimagnetic and superparamagnetic behavior
depending on the size of the particle.
The Examiner’s reliance on Gao as anticipating claim 1 depends on
the finding that Gao teaches FesCE and the corollary finding that this
material is a known ferrimagnetic material. However, as the analysis above
concludes, FesCE does not always exhibit ferrimagnetic behavior, i.e., when
the particle is sufficiently small the particle may be superparamagnetic
rather than ferrimagnetic even though it is identified as a known
ferrimagnetic material. Gao teaches that the nanocrystal is paramagnetic,
superparamagnetic, or ferromagnetic. Gao H 12 and 31. Gao specifically
teaches Fe^Cf superparamagnetic nanocrystals. Gao Example 1,1103. The
Examiner does not direct attention to any disclosure in Gao in which the
nanocrystal retains ferrimagnetic behavior, nor do we find any. As a result,
we are constrained to reverse the Examiner’s rejection based on Gao because
the Examiner fails to establish that Gao inherently teaches ferrimagnetic
nanoparticles exhibiting ferrimagnetic behavior.
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Rejection 4: Obviousness of claim 16 over Gao in view of Baldi, and further
as evidenced by the Ferrimagnetism and Superparamagnetism Wikis
Claim 16 depends from claim 1 and further requires that the polymer
complex is PEGn2-h-PAA4o modified CoFe2C>4, NH2-PEG112-&-PAA40
modified CoFe2C>4, or PNIPAM68-£>-PAA28 modified CoFe2C>4.
The Examiner finds Gao, as evidenced by the two Wiki references,
fails to disclose a polymer complex comprising one of the above specific
block copolymers and a CoFe2C>4 magnetic nanoparticle. Ans. 6. The
Examiner finds Gao teaches that the biocompatible macromolecule ranges in
molecular weight from 600 to 20,000, wherein the macromolecule includes
linear or branched PEG and poly(acrylic acid). Id. As such, the Examiner
concludes the ordinary artisan would have optimized the number of PEG and
poly(acrylic acid) units to obtain a block copolymer having a molecular
weight falling within the range of 600 to 20,000. Id.
The Examiner finds Baldi teaches microcapsules comprising
biodegradable polymers and containing magnetic nanoparticles of FesCE and
CoFe2C>4. Id. The Examiner concludes that it would have been obvious to
substitute CoFe2C>4 for Gao’s FesCE nanoparticle “because of the equivalence
of CoFe2C>4 and FesCEto function as magnetic nanoparticles.” Id. at 7.
Appellants argue that neither Gao nor Baldi teaches or suggests that
the magnetic nanoparticles are ferrimagnetic nanoparticles, and Baldi fails to
teach or suggest that CoFe2C>4 as used therein has ferrimagnetic particles.
As discussed above, Appellants’ argument that Gao fails to teach or suggest
ferrimagnetic nanoparticles having a nonzero magnetic moment at a given
temperature in the absence of an applied magnetic field is persuasive. In a
similar manner, Appellants’ argument that Baldi also fails to teach or
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suggest that the CoFe204 nanoparticles, when substituted in Gao, have a
nonzero magnetic moment at a given temperature in the absence of an
applied magnetic field is likewise persuasive. Thus, the Examiner’s finding
that Baldi’s FesCC and CoFe204 nanoparticles must have a nonzero magnetic
moment because they are the same materials as used by Appellants lacks
sufficient support in the record.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). The Examiner has not carried the burden of
establishing, by a preponderance of the evidence, the factual basis for the
conclusion that the claimed invention would have been obvious. It follows
that we will not sustain the Examiner’s obviousness rejection of claim 16
based on a combination of Gao and Baldi, as evidenced by the
Ferrimagnetism and Superparamagnetism Wikis.
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Rejection 5: Obviousness of claims 14, 15, and 19 over Gao, as evidenced
by the Superparamagnetism and Ferrimagnetism Wikis, and further in view
of Labhasetwar
Claims 14, 15, and 19 depend, directly or indirectly, from claim 1.
The Examiner does not rely on Labhasetwar to remedy the deficiencies in
Gao, as evidenced by the Superparamagnetism and Ferrimagnetism Wikis,
discussed above. Accordingly, for the same reasons given above, we do not
sustain this rejection.
Rejection 6: Obviousness of claims 1, 3—6, 12, and 14 over Lowery in view
ofSkaff
The Examiner finds Lowery teaches responsive polymer coated
magnetic nanoparticles, wherein the responsive polymer may be block
copolymers ofPEO, PPO, and poly(N-isopropylacrylamide). Ans. 5. The
Examiner acknowledges that Lowery fails to teach ferrimagnetic
nanoparticles having a nonzero net magnetic moment in the absence of a
magnetic field. Id. The Examiner relies on Skaff for a teaching of magnetic
nanoparticles of FesCE and CoFe2C>4, concluding it would have been obvious
to have used such materials in Lowery for improving visibility of internal
body structures during imaging. Id.
Appellants argue that Lowery fails to teach ferrimagnetic
nanoparticles, and that Skaff s magnetic nanoparticle materials, FesCL and
CoFe2C>4, do not necessarily exhibit ferrimagnetic behavior, i.e., have a
nonzero net magnetic moment in the absence of an applied magnetic field.
Appeal Br. 14—15. For the reasons given above with regard to Skaff, we are
persuaded of reversible error in the Examiner’s finding that Skaff teaches
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ferrimagnetic nanoparticles having a nonzero net magnetic moment in the
absence of an applied magnetic field. Since the Examiner’s obviousness
conclusion relies on this erroneous finding, we are also persuaded of
reversible error in this conclusion. Accordingly, we do not sustain this
rejection.
Rejection 7: Obviousness of claims 33—35 over Lowery in view of Skaff and
further in view of Guiying and Baldi
Claim 33 is reproduced below from the Claims Appendix to the
Appeal Brief.
33. A composition comprising a polymer complex comprising a
ferrimagnetic inorganic core in direct contact with a thermally
responsive water-soluble copolymer shell, wherein the
composition has a tunable hydrodynamic diameter in solution.
The Examiner finds Lowery and Skaff fail to teach a tunable
hydrodynamic diameter. Ans. 7. Further, even though the Examiner
previously found Skaff taught CoFe2C>4 magnetic nanoparticles (id. 5), for
this rejection, the Examiner finds both Lowery and Skaff fail to teach
CoFe204 as the magnetic nanoparticle. Id. at 7. However, the Examiner
finds Lowery teaches encapsulating an iron oxide particle with a responsive
polymer comprising NIP AM and acrylic acid. Id. The Examiner finds
Guiying teaches that NIP AM and acrylic acid micelles have a tunable
hydrodynamic diameter in solution. Id. Therefore, the Examiner finds that
Lowery’s NIP AM and acrylic acid encapsulated particles have a tunable
hydrodynamic diameter as taught by Guiying. Id. The Examiner further
finds Baldi teaches microcapsules comprising biodegradable polymers and
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containing magnetic nanoparticles of FesCL and CoFe2C>4. Id. The
Examiner concludes that it would have been obvious to have substituted
CoFe2C>4 particles for Lowery’s iron oxide particles because both are
functionally equivalent magnetic nanoparticles. Id. at 8.
Appellants argue that none of Lowery, Skaff, Baldi, and Guiying
teach ferrimagnetic nanoparticles. Appeal Br. 17—18. Unlike our holdings
above, for this rejection, we do not find Appellants’ argument persuasive.
None of claims 33—35 recite “ferrimagnetic nanoparticles” nor do any of
these claims recite that the ferrimagnetic inorganic core has a nonzero net
magnetic moment at a given temperature in the absence of a magnetic field.
Therefore, although Appellants define “ferrimagnetic nanoparticle” as
“magnetic particles that in the absence of an applied magnetic field, have a
nonzero net magnetic moment at a given temperature” (Spec. 131), such a
definition does not apply to these claims nor will we import such a limiting
definition into the claims. In re Lundberg, 244 F.2d 543, 548 (CCPA 1957)
(“[I]t is the language itself of the claims which must particularly point out
and distinctly claim the subject matter which the applicant regards as his
invention, without limitations imported from the specification. . . .
Limitations in the specification not included in the claim may not be relied
upon to impart patentability to an otherwise unpatentable claim.”). The
Examiner has provided evidence that Fe^Cf and CoFe2C>4 are generally
classified as ferrimagnetic materials, and this classification of the material
does not appear dependent on particle size. See Skaff, Baldi, and
Ferrimagnetism Wiki. As the claims do not require that these ferrimagnetic
materials exhibit ferrimagnetic behavior, Appellants’ arguments fail to
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persuade us of reversible error in the Examiner’s findings or conclusion of
obviousness.
CONCLUSION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs,
the rejection of claims 1, 3, 5, 6, and 12 under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Baldi is reversed',
the rejection of claims 1, 3, 5, 6, and 14 under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Skaff is reversed',
the rejection of claims 1, 3, 8—13, 17, and 18 under 35 U.S.C. § 102(b)
(pre-AIA) as anticipated by Gao, as evidenced by Superparamagnetism and
Ferrimagnetism, is reversed',
the rejection of claim 16 under 35 U.S.C. § 103(a) (pre-AIA) as
unpatentable over Gao, as evidenced by Superparamagnetism and
Ferrimagnetism, and further in view of Baldi, is reversed',
the rejection of claims 14, 15, and 19 under 35 U.S.C. § 103(a) (pre-
AIA) as unpatentable over Gao, as evidenced by Superparamagnetism and
Ferrimagnetism, and further in view of Labhasetwar, is reversed', and
the rejection of claims 1, 3—6, 12, and 14 under 35 U.S.C. § 103(a)
(pre-AIA) as unpatentable over Lowery in view of Skaff, is reversed.
However, upon consideration of the record and for the reasons given
above and in the Examiner’s Answer, the rejection of claims 33—35 under
35 U.S.C. § 103(a) (pre-AIA) as unpatentable over Lowery in view of Skaff,
and further in view of Guiying and Baldi, is affirmed.
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DECISION
The decision of the Examiner rejecting claims 1, 3—6, and 8—19 is
reversed, but the decision of the Examiner rejecting claims 33—35 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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