Ex parte MALHOTRA - Page 15




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


          uppermost layer, and thereby teaches away from additional                   
          drying of the medium after printing.  Therefore, the                        
          examiner's statement that Miyamoto desires to dry the ink                   
          lacks basis in the reference.                                               
               We do agree with the examiner that Ayers suggests to the               
          skilled artisan that ordinarily a recording medium needs to be              
          dried after printing, and that known methods include microwave              
          drying.  However, since Miyamoto specifies a medium that dries              
          immediately without external drying means, adding a microwave               
          drying step to Miyamoto's method would appear to be contrary                
          to the teachings of Miyamoto.  Therefore, it would not have                 
          been obvious to one of ordinary skill in the art to add a                   
          microwave drying step to Miyamoto.  Accordingly, the examiner               
          has failed to establish a prima facie case of obviousness, and              
          we cannot maintain the rejections of claim 13 and claims 14                 
          through 24 and 31, which depend from claim 13.                              
               For the addition of biocides and antistatic agents, for                
          claims 25, 26, 29, and 30, the examiner submits (Answer, pages              
          8-9) that Vieira teaches in column 7, line 67-column 8, line                
          4,                                                                          


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