Ex parte TAKEMOTO et al. - Page 4




          Appeal No. 96-1228                                                          
          Application 08/127,480                                                      

               Appellants argue that "it is clear that there could not                
          possibly be any suggestion [in Hara] of coating a rear                      
          surface, as required by claim 1" (Br5), that the "rear                      
          surface [of Hara] does not include an ink-repellant coating"                
          (Br5), and "it is clear that there is absolutely no teaching                
          or suggestion in Hara that would provide the motivation for                 
          a person of ordinary skill in the art to apply an                           
          ink-repellant coating to the back surface of the nozzle                     
          plate 84 in the Figure 19 embodiment" (Br5).  Therefore,                    
          appellants argue that the subject matter of claim 1                         
          distinguishes over Hara because the ink-repellant coating is                
          on the rear surface.  The language of claim 1 does not                      
          support this argument.                                                      
               Claim 1 recites that the ink-repellant coating is on "a                
          portion around said nozzle hole contiguous to said rear                     
          surface of said nozzle plate."  The language could be                       
          clearer, but it does not require the ink-repellant coating                  
          to be on the rear surface; the coating only has to be                       
          "contiguous to said rear surface" (emphasis added).                         
          "Contiguous" is defined as "1 a(1): touching along                          
          boundaries often for considerable distances ... b: next or                  

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