Appeal No. 2002-0728
Application No. 09/404,570
the ink from a solid state to a liquid state” recited in claim 4.
See the Brief, page 16. Schwarz, however, teaches that its hot
melt ink composition has a melting temperature which almost
entirely overlaps the preferred melting temperature of the claimed
ink composition. See, e.g., column 6, lines 32-33. We also take
official notice that one of ordinary skill in the art knows that
the melting rate (time) of the hot-melt ink composition described
in Schwarz is also dependent on the heating temperature employed.
However, claim 4 does not specify a heating temperature. 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 suggested by Schwarz. 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)
The appellant argues that none of the applied prior art
references would have suggested the ink composition recited in
claim 10. See the Brief, pages 12-13. We concur with the
appellant that the examiner has not presented sufficient evidence
to show that one of ordinary skill in the art would have been led
to employ the aldehyde copolymer taught in Schwarz, Siddiqui and/or
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