Ex Parte MALHOTRA - Page 11




              Appeal No. 1998-0189                                                                                          
              Application 08/196,933                                                                                        



                     (1)  Claims 1 through 4, 7, 10, 13, 41, and 42 are rejected under 35 U.S.C.                            
              § 103(a) as unpatentable over  JP’2795 (see PTO English-language translation for                              
              cites).                                                                                                       
                     The following findings of fact are supported by a preponderance of the evidence.                       
                     10.  JP’279 describes an ink jet recording medium that is capable of recording                         
              images using a water-based ink containing a water-soluble dye.  The recording medium                          
              is said to have excellent absorption characteristics so that the printed images can be                        
              well preserved.  Translation, page 1, lines 4-5, and 15-19.                                                   
                     11.  The recording medium of JP’279 comprises a support having thereon an ink-                         
              receiving layer.  The layer comprises a mercapto-containing nitrogen-containing-hetero-                       
              ring compound of formula (I).  Translation, page 6, lines 12-23, and page 7, line 16,                         
              through page 8, line 5.  JP’279 lists eleven compounds as examples of said  hetero-ring                       
              compounds, including 5-mercapto-1-methyl tetrazole, 2-mercapto-pyrimidine, and 2-                             
              mercapto-4-methyl-pyrimidine.  Translation, page 7,  lines 1-6.                                               
                     12.   The recited “pyrimidine” compound in claim 1 reads on the pyrimidine                             
              compounds named in finding 11.                                                                                


                     5The Patent Abstract of Japan JP’279 was cited as an “X” reference in the                              
              European Search Report that was filed in the Information Disclosure Statement (IDS)                           
              filed Jul. 14, 1997, attached to Paper No. 24.  The IDS was filed before the mailing of                       
              the examiner’s answer.  According to the European Patent Office, an “X” reference is                          
              considered to be “particularly relevant, if taken alone,” to the claimed subject matter.                      
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