Appeal No. 2001-2465
Application No. 09/167,878
Claims 1-8, 10-15, 18-20, 22, 24-26, 30 and 31 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Kappele in view
of Maslanka and Nakashima. The remaining claims on appeal are
correspondingly rejected over these references and further in
view of various combinations of the other references listed above.
OPINION
On the record before us, none of the rejections advanced by
the Examiner can be sustained.
We share the Appellants’ fundamental position that the
rejection of claim 1, the sole independent claim on appeal, is
based upon impermissible hindsight derived from the Appellants’ own
disclosure rather than a teaching, suggestion or incentive derived
from the applied prior art. W.L. Gore & Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984). This is because it is only the
Appellants’ own disclosure which provides any reason for combining
the applied reference teachings in such a manner as to yield the
composition defined by appealed independent claim 1.
In this regard, it is the Examiner’s position that one with
ordinary skill in the art would have provided the ink-jet printing
ink composition of Kappele with a cationic, water-soluble resin
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