Ex Parte MALHOTRA - Page 8




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


                 To remedy this deficiency, the examiner relies on the                              
           disclosure of Tobias.  The examiner finds (Answer, page 7), and the                      
           appellant does not dispute (Brief, pages 26-28), that:                                   
                       Tobias et al., which is d   rawn to hot melt inks,                           
                 discloses the use of 0.1-5% conductivity agents in order                           
                 to control the conductivity of the ink from 500-1500                               
                 microsiemens/cm or approximately 8.7-9.2 log(picomho/cm)                           
                 which ensures that the ink has sufficient conductivity in                          
                 order to be successfully ink jet printed (col.3, line 19,                          
                 lines 29-30 and 35-37).                                                            
           The appellant also acknowledges (Brief, page 26) that:                                   
                       Tobias et al. discloses a hot melt ink composition                           
                 for use in continuous ink jet printing comprising an                               
                 electrolyte, an electrolyte solvating and dissociating                             
                 compound, and an image-forming agent, said ink being                               
                 solid at about 25/C, said ink liquefying at a                                      
                 temperature between 75/C and 175/C, and said ink in the                            
                 liquid stage having a conductivity of greater than about                           
                 100 microsiemens/cm.                                                               
           Thus, we determine that one of ordinary skill in the art would have                      
           been led to ensure that the hot melt ink composition of Schwarz has                      
           sufficient conductivity, such as that claimed, so that it can be                         
           “successfully ink jet printed” during the continuous ink jet                             
           printing process.                                                                        
                 Accordingly, we affirm the examiner’s decision rejecting                           
           claims 6 and 16 under 35 U.S.C. § 103.                                                   
                 We turn next to the examiner’s rejection of claim 7 under 35                       
           U.S.C. § 103 as unpatentable over Malhotra in view of either                             

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