Ex Parte MALHOTRA - Page 11




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


           the appellant only argues that Shacklette and Han do not remedy the                      
           deficiencies of the applied prior art references, including                              
           Schwarz, regarding the limitations of claim 1.  Id.  Thus, for the                       
           reasons indicated supra, we affirm the examiner’s decision                               
           rejecting claims 14 and 15 under 35 U.S.C. § 103.                                        
                 We turn next to the examiner’s rejection of claims 23 and 24                       
           under 35 U.S.C. § 103 as unpatentable over the combined disclosures                      
           of Malhotra and Watt.  For the reasons set forth above and the                           
           reasons set forth at pages 34-36 of the Brief, we reverse this                           
           rejection.  As argued by the appellant (Id.), there is no                                
           suggestion or motivation to combine the binders taught by Watt in                        
           the ink composition of Malhotra as both Watt and Malhotra are                            
           directed to employing materially different ink ingredients for                           
           different purposes.                                                                      
                 Pursuant to 37 CFR § 1.196(b)(2001), we enter a new ground of                      
           rejection against claim 24.  Specifically, claim 24 is rejected                          
           under 35 U.S.C. § 103 as unpatentable over the disclosure of                             
           Schwarz for the reasons indicated supra.  Claim 24 is dependent on                       
           claim 1 and recites that the aldehyde copolymer ink vehicle recited                      
           in claim 1 is, inter alia, poly(p-toluenesulfonamide-co-                                 
           formaldehyde) which is suggested in Schwarz as indicated above.                          


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