Ex Parte MALHOTRA - Page 10




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


           containing acid as a conductivity enhancing agent in its hot melt                        
           ink composition.  See the Answer, page 9.                                                
                 To remedy this deficiency, the examiner relies on the                              
           disclosures of Shacklette and Han.  The examiner finds (Answer,                          
           page 9), and the appellant does not dispute (Brief, pages 32-33),                        
           that:                                                                                    
                       Shacklette discloses the use of polyaniline                                  
                 complexes with phosphonic or phosphinic acid in order to                           
                 impart conductivity and enhanced thermal stability to                              
                 polymers including formaldehyde-sulfonamide (col.3, lines                          
                 45 and 66-68, col. 9, lines 39-41, col. 10, lines 1 and 3                          
                 col. 12, lines 30-38, col. 13, line 9, and col. 18, lines                          
                 40-42).  Although there is no explicit disclosure that                             
                 the complex is suitable for use in inks, it is well known                          
                 in the art as found in state-of-the-art references such                            
                 as [Han] (page 17, lines 25-26) that these polyaniline-                            
                 phosphorous-containing acid complexes are indeed suitable                          
                 for use in inks.                                                                   
           Thus, we determine that one of ordinary skill in the art would have                      
           been led to employ the claimed complex of dianiline and a                                
           phosphorus-containing acid taught by Shacklette and/or Han in the                        
           hot melt composition of the type described in Schwarz, motivated by                      
           a reasonable expectation of successfully imparting desired                               
           conductivity and enhanced thermal stability.                                             
                 The appellant does not argue that there is no motivation to                        
           employ the complex taught by Shacklette and/or Han in the hot melt                       
           ink composition of Schwarz.  See the Brief, pages 32-33. Rather,                         

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