Ex parte MURAYAMA et al. - Page 5




          Appeal No. 1999-0097                                                        
          Application No. 08/532,976                                                  


          long chain diol that is encompassed by the claimed formula,                 
          and which is used in the claimed amount.                                    
               Based on the collective teachings of Kolycheck and                     
          Ohkubo, we agree with the examiner that it would have been                  
          obvious for one of ordinary skill in the art to select the                  
          sulfonated long chain diol of Ohkubo for the long chain diol                
          component of Kolycheck for the purpose of improving the                     
          dispersion of the magnetic pigment.  In addition, we agree                  
          with the examiner that Ohkubo would have suggested utilizing                
          an amount of the sulfonated long chain diol that falls within               
          the claimed range.                                                          
               Appellants, while conceding that Kolycheck does not                    
          define the amount of long chain polyol present in the                       
          composition, points to EXAMPLE 1 of the reference which uses                
          14.66 mol% of the long chain diol.  However, as noted by the                
          examiner, the reference is not limited to its specific                      
          examples, and Kolycheck provides no teaching that the long                  
          chain diol must be used in an amount greater than 1-5 mol%.                 
          Furthermore, whereas EXAMPLE 1 of Kolycheck uses a 2.4/1 ratio              
          of short chain diol to long chain diol, claim 2 of Kolycheck                
          recites that the ratio of short chain diol to long chain diol               

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