Ex parte MALHOTRA - Page 8




          Appeal No. 96-3946                                                          
          Application No. 08/208,317                                                  


               solvent for coating onto the substrate, subsequent                     
               to which the solvent evaporates from the coating.                      


               Turning to the specification, we find no definition of                 
          "solids content."  Furthermore, the description of the micro-               
          spheres on page 9 of the specification says:                                
                    The first coating layer, situated between the                     
               second ink-receiving layer and the substrate,                          
               typically contains microspheres in an amount of from                   
               about 0.25 to about 50 percent by weight, and                          
               preferably from about 2.5 to about 25 percent by                       
               weight, although the amount can be outside these                       
               ranges.                                                                
          A similar description of the microspheres in the second layer               
          appears in the paragraph bridging pages 11 and 12 of the                    
          specification, but with ranges of 0.1 to 10 percent and                     
          preferably 0.1 to 3 percent.  In other words, the percentages               
          claimed are identical to those recited in the specification,                
          but "in the solids content" does not appear in the above                    
          referenced sections of the specification.  Therefore, it is                 
          unclear how "in the solids content" limits the claims, since                
          the ranges are the same as in the specification where the                   
          phrase does not appear.  Appellant refers to the examples on                
          pages 27 and 28, wherein the weight percent of solids in a                  

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