Ex Parte MALHOTRA - Page 7




           Appeal No. 2002-0728                                                                     
           Application No. 09/404,570                                                               


           Watt in the ink composition of Malhotra.  Specifically, the                              
           examiner has not established that one of ordinary skill in the art                       
           would have reasonably expected that the aldehyde copolymer useful                        
           for the ink composition of Schwarz, Siddiqui and/or Watt is useful                       
           for the purposes of Malhotra’s ink composition.  See the Answer in                       
           its entirety.  In this regard, we note the applied prior art                             
           references are directed to employing materially different                                
           ingredients for different purposes.                                                      
                 Accordingly, we affirm the examiner’s decision rejecting                           
           claims 1 through 5, 8, 9, 11 through 13 and 17 through 21 under 35                       
           U.S.C. § 103, but reverse the examiner’s decision rejecting claim                        
           10 under 35 U.S.C. § 103.                                                                
                 We turn next to the examiner’s rejection of claims 6 and 16                        
           under 35 U.S.C. § 103 as unpatentable over Malhotra in view of                           
           either Schwarz or Siddiqui, Watt and Takazawa and further in view                        
           of Tobias.  The content of Schwarz is discussed above.  Schwarz                          
           does not mention that its hot melt ink composition has the claimed                       
           conductivity property.                                                                   
                                                                                                   
                                                                                                   
                                                                                                   


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