Ex Parte MATZINGER et al - Page 4



                   Appeal No. 2001-2465                                                                                                                                   
                   Application No. 09/167,878                                                                                                                             
                   composition of the type here claimed in view of Maslanka’s teaching                                                                                    
                   of a cationic water soluble prepolymer.  However, we perceive no                                                                                       
                   basis in the applied references for so combining the teachings                                                                                         
                   thereof.  By way of explanation, the cationic prepolymer of                                                                                            
                   Maslanka is not used by patentee as an ingredient, per se, in an                                                                                       
                   ink composition.  Instead, this prepolymer is used as a reactant in                                                                                    
                   forming the graft copolymer particles of Maslanka which are used as                                                                                    
                   organic pigments and particularly as paper fillers (e.g., see lines                                                                                    
                   3-12 in column 2).  Furthermore, these graft copolymer particles                                                                                       
                   are explicitly disclosed as being water insoluble (e.g., see lines                                                                                     
                   13-16 in column 4 and line 1 of patent claim 1).                                                                                                       
                             In light of the foregoing, it is apparent that Maslanka would                                                                                
                   not have suggested providing Kappele’s ink-jet printing ink                                                                                            
                   composition with a cationic water-soluble resin composition of the                                                                                     
                   type here claimed as the Examiner seems to believe.  Arguably, an                                                                                      
                   artisan would have derived from Maslanka a teaching and suggestion                                                                                     
                   to use Maslanka’s cationic prepolymers to produce patentee’s graft                                                                                     
                   copolymer particles for use as organic pigments in the ink                                                                                             
                   compositions of Kappele.  However, the resulting composition would                                                                                     
                   not correspond to the composition defined by appealed independent                                                                                      
                   claim 1.  This is because the graft copolymer particles would not                                                                                      


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