Ex Parte MALHOTRA - Page 12




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



                     13.  JP’279 teaches that the hetero-ring compound (I) is present in an amount of                       
              from 0.2 to 100 mmol/m2, preferably from 1.0 to 50 mmol/m2, of the support.                                   
              Translation, page 7, lines 13-15.                                                                             
                     14.   JP’279 teaches that the support includes paper or transparent thermoplastic                      
              films. Translation, page 11, lines 18-25.                                                                     
                     15.   JP’279 exemplifies two ink-jet recording media that comprise a paper                             
              support that is coated with size-pressing liquids (60g/m2) comprising 2% of polyvinyl                         
              alcohol (PVA 117, Kurarei), 5% of white carbon (NIPSHEL LP, Nihon Silica), and  5-                            
              mercapto-1-methyl tetrazole salt in amounts of  2.0 or 4.0%.  Translation, page 19,                           
              Operational examples 5 and 6.                                                                                 
                     16.  JP’279 does not exemplify a jet ink recording medium that is coated with                          
              either pyrimidine compound in finding 11.                                                                     
                     Although not exemplified, the ink jet recording medium taught by JP’279 meets                          
              the requirements of the claims on appeal in regard to: (1) the paper or transparent                           
              polymeric substrate,  (2) the active pyrimidine compound, (3) the amounts of the active                       
              compound and binder resin, and  (4)  the suitability of the recording medium to receive                       
              printed images and  images of rapidly absorbing aqueous ink.   Accordingly, we hold                           
              that the substitution of 1-methyl-5-mercapto tetrazole with either 2-mercapto-pyrimidine                      
              or  2-mercapto-4-methyl-pyrimidine, as the hetero-ring compound, in the recording                             
              media in finding 15, would have been obvious to the person having ordinary skill in the                       
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