Ex Parte MALHOTRA - Page 8




          Appeal No. 2002-0699                                                         
          Application No. 09/401,740                                                   


          composition.  We also take official notice that one of ordinary              
          skill in the art knows that the melting rate (time) of the solid             
          ink composition described in Takazawa is dependent on the heating            
          temperature employed.  Thus, it is reasonable to conclude that               
          the functional limitation recited in claim 4 does not distinguish            
          the claimed ink composition from the ink composition described in            
          Takazawa.  Compare In re Schreiber, 128 F.3d 1473, 1477, 44                  
          USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Yanush, 477 F.2d 958,              
          959, 177 USPQ 705, 706 (CCPA 1973); In re Casey, 370 F.2d 576,               
          580, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 312 F.2d 937,                
          939, 136 USPQ 458, 459 (CCPA 1963).                                          
               It follows that Takazawa would have rendered the subject                
          matter defined by claims 1,2 4, 12 through 14, 16, 21 and 22                 
          obvious to one of ordinary skill in the art withing the meaning              
          of 35 U.S.C. § 103.                                                          
               Claim 8, however, is on different footing.  There is no                 
          teaching or suggestion found in Takazawa to employ the claimed               
          specific hardening component, e.g., poly("-methyl styrene) in                
          its solid ink composition.  The fact that the claimed poly                   
          ("-methyl styrene) may be encompassed by the generic language                
          “polystyrene” in Takazawa does not by itself provide a sufficient            
          suggestion to one of ordinary skill in the art to select it from             
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