Ex Parte GELARDEN - Page 8




          Appeal No. 2002-0701                                                         
          Application 09/201,269                                                       


                     Rejection of claim 8 under 35 U.S.C. § 103                        
                         over Campbell in view of Carlick                              
               The portion of Carlick relied upon by the examiner (answer,             
          pages 6-7) is the following:                                                 
                    The hard or tackifying resins that are suitable                    
               for use in the lithographic ink vehicles are those                      
               resins that are well known in the art of ink making for                 
               their exellent [sic] lithographic properties and good                   
               pigment wetting capabilities.  These include alkyd                      
               resins, urethane-modified alkyd resins, rosin-modified                  
               phenolic resins, hydrocarbon resins, rosin esters,                      
               polyketones, and the like.                                              
          The examiner argues that it would have been obvious to one of                
          ordinary skill in the art to add Carlick’s resin to Campbell’s               
          branched polymer to produce an ink having good wetting ability               
          (answer, page 7).                                                            
               The examiner’s argument is not persuasive because the                   
          examiner has not established that Campbell’s teaching that the               
          branched vinyl resins can be used to form effective coating                  
          compositions (col. 8, lines 43-44) would have fairly suggested,              
          to one of ordinary skill in the art, using the resins to form a              
          printing ink composition, particularly a printing ink composition            
          having a branched vinyl resin in solution,6 as required by the               

               6 Campbell teaches that an increase in weight average                   
          molecular weight and polydispersity typically correlates with                
          formation of insoluble gels (col. 10, lines 3-4).  The examiner              
          merely argues that Campbell does not disclose the minimum                    
                                          8                                            





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