Ex parte MOCHIZUKI et al. - Page 6




          Appeal No. 2000-2263                                                        
          Application No. 08/925,387                                                  


          precision.  In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671,              
          1674 (Fed. Cir. 1994).                                                      
               We note that independent claim 8 recites "said ink                     
          feeding needle is disposed slightly behind said guiding shaft               
          in said thrust direction so that said ink feeding needle is                 
          positioned in contact with said ink outlet piece when said                  
          cartridge is properly positioned in said cartridge holder by                
          said hole and said guiding shaft."  Therefore, we find that                 
          the scope of Appellants' claim 8 positively requires the ink                
          feeding needle being disposed slightly behind the guiding                   
          shaft.                                                                      
               In the Examiner's answer, the Examiner does not point to               
          any teaching in Appellants' prior art Figs. 7 and 8 or in                   
          Nakamura of locating the ink feeding needle slightly behind                 
          the guiding shaft.  See pages 4 and 5 of the answer.  The                   
          Examiner, however, argues that one of ordinary skill in the                 
          art would have made the modification to provide the ink                     
          feeding needle behind the position guiding shaft.  On pages 7               
          and 8 of the answer, the Examiner points to the admitted prior              
          art of Figs. 7 and 8 and the specification, page 2, lines 8                 
          through 19, for a teaching of the motivation of providing                   

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