Ex Parte Wang et al - Page 4

                Appeal 2006-2739                                                                               
                Application 09/918,584                                                                         
                      Before Appellants inserted “and a hydrophilic group” into the claim                      
                and changed “backbone” to “base chain” (see Amendment of July 2, 2004),                        
                the claim read “a dye chromophore incorporated into the polymer                                
                backbone,” as is consistent with the second embodiment of the polymer                          
                described in the Specification.                                                                
                      To support their arguments, Appellants rely upon the portions of the                     
                Specification directed to the second embodiment, namely the Specification                      
                at page 6, line 22 to page 7, line 12; the specific structures on pages 8 and 9;               
                and the Examples at page 11, line 19 to page 12, line 29.                                      
                      The Specification describes ink jet ink compositions.  The inks are                      
                dye-based.  According to the Specification “[a] dye is a colorant which is                     
                dissolved in the carrier medium.” (Specification 2:12-13).  Appellants’                        
                carrier medium is water (Claim 1).  The Specification discloses that                           
                polymeric dyes were known in the art and their solubility is tunable                           
                (Specification 3:4-7).  The Specification discloses that for the polymeric dye                 
                of the invention “[a]ny hyperbranched polymer may be used” (Specification                      
                4:5-7) and then further discloses that those in a copending application                        
                entitled “Water Soluble and Dispersible Highly Branched Polyamides” may                        
                be used (Specification 4:14-19).  Then the Specification describes preferred                   
                embodiments of polymers having a variety of chemical groups, including                         
                carbonyl groups, groups the Examiner acknowledges are hydrophilic                              
                (Specification 6:22 to 7:2) and generic classes of polymers such as                            
                polyamides, polyesters, polyethers, etc. (Specification 7:13-16) which                         
                contain hydrophilic groups and can be water-soluble as well as chemical                        
                specific species containing hydrophilic groups (Specification 8-9).                            



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