Ex Parte Wang et al - Page 2

                Appeal 2006-2739                                                                               
                Application 09/918,584                                                                         
                                              BACKGROUND                                                       
                      The claims are directed to an ink jet ink composition.  The                              
                composition contains water, a humectant, and a hyperbranched polymeric                         
                dye.  Claim 1 is illustrative of the subject matter on appeal:                                 
                             1.  An ink jet ink composition comprising water, a                                
                      humectant, and a water-soluble hyperbranched polymeric                                   
                      dye comprising a hyperbranched polymer having a dye                                      
                      chromophore and a hydrophilic  group incorporated into                                   
                      the polymer base chain.                                                                  
                      The Examiner rejects claims 1, and 10-18 under 35 U.S.C. § 112, ¶ 1                      
                on the grounds that the claims fail to comply with the written description                     
                requirement of the statute.  Specifically, the Examiner finds no support in                    
                the original Specification for “water-soluble” and “a hydrophilic group” as                    
                those terms are used in claim 1, the only independent claim.                                   
                      The Examiner also objects to claims 11-13 under 37 C.F.R. § 1.75(c)                      
                as being of improper dependent form for failing to further limit the subject                   
                matter of a previous claim.                                                                    

                                                DISCUSSION                                                     
                      With regard to the rejection under 35 U.S.C. § 112, ¶ 1, Appellants                      
                contend that the general discussion of the polymers as well as specific                        
                examples of water-soluble polymers and hydrophilic groups in the                               
                Specification provide support for the claimed subject matter (Br. 6).  The                     
                Examiner contends that support is limited to the specific hydrophilic groups                   
                and water-soluble polymers disclosed and that support does not extend                          
                broadly to all hydrophilic groups and all water-soluble polymers as claimed                    
                (Answer 4-5 and 10).                                                                           

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