Ex Parte MALHOTRA - Page 13




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



              art.   Such a person would have had a reasonable expectation of successfully obtaining                        
              an ink jet recording medium that is capable of recording images using a water-based ink                       
              containing a water-soluble dye, and has the benefits described in finding 10.                                 
                                                    OTHER ISSUES                                                            
                     If prosecution is resumed in this application, the examiner and appellant should                       
              consider the following issues:                                                                                
                     (1)  Do the recited active benzimidazole compounds in the claims encompass the                         
              weakly cationic benzimidazole compounds described by Miyamoto6, in light of the                               
              disclosure of this application?                                                                               
                     The instant specification discloses that the benzimidazole compounds are those                         
              represented by the general formula at page 52, lines 1-5.  The formula does not limit the                     
              substituent groups on the benzimidazole structure.  Miyamoto describes an ink jet                             
              recording sheet.  The sheet comprises a paper support and a coating layer thereon  that                       
              comprises oxidized starch (MS 3800, manufactured by Nihon Shokuhin Kako Co., Ltd.)                            
              and a weakly cationic benzimidazole derivative, as a cationic fluorescent brightening                         
              agent.  See Examples 1 and 2, at column 6, and column 5, lines 43-44.                                         




                     6Miyamoto was cited as an “X” reference in the European Search Report that                             
              was filed in the Information Disclosure Statement on Jul. 14, 1997, attached to Paper                         
              No. 24.                                                                                                       
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