Ex parte OCHI et al. - Page 8




          Appeal No. 1998-2471                                       Page 8           
          Application No. 08/222,913                                                  


               Regarding claims 1-7, the appellants argue, “Italiano ...              
          does not disclose or suggest the specific resistance                        
          limitation as claimed.”  (Appeal Br. at 8.)  Regarding claim                
          11, the appellants similarly argue that the references do not               
          suggest that “the ink and the ink exhausting indicating liquid              
          have a specific electrical resistance.”  (Id. at 13.)                       
          Regarding claims 22-24, the appellants similarly argue, “these              
          claims require ... that the liquids ... have different                      
          resistance values ....  As stated above, the combination of                 
          Italiano and the []APA does not disclose this structure.”                   
          (Id.)  The examiner replies, “the resistance limitation is ...              
          well met by Italiano teaching an oil-based liquid floating on               
          top of the ink, wherein the liquid and the ink each inherently              
          possesses electrical resistance of such claimed relationship                
          in order for the liquid to float on top of the ink.”                        
          (Examiner’s Answer at 12.)  We agree with the appellants.                   


               Independent claim 1 specifies in pertinent part the                    
          following limitation: “ink ... having an electrical resistance              
          of a first value ... and an ink exhaustion indicating liquid                
          having an electrical resistance of a second value which is                  







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