Appeal No. 2003-1593 5
Application No. 09/729,650
lines 66-67, claims 10, 11, 14, 15 and 19. A marking particle is present in the ink-jet
composition and may be a pigment or an insoluble dyestuff among a limited number of
components. See column 3, lines 56-57 and column 4, lines 56-67. When ejected as
droplets, the inks are substantially solid colorant in the presence of a carrier. See column
3, line 7-10. The ink may also contain a charging agent in the form of a metal soap. See
column 3, line 59, column 4, lines 17-22 and column 5, lines 22 to 43. On the record
before us, however, there is no evidence to support a conclusion that the charging agent
decomposes to form a metal oxide at the temperatures utilized by Lima-Marques. Indeed
the only reasonable conclusion to be drawn from Lima-Marques is that the marking agents
in and of themselves provide the requisite color obtained when the ink-jet composition is
deposited upon a substrate. Furthermore, there is no concept in Lima-Marques of heating
the substrate to a sufficiently high temperature to destroy the existing colorant and oxidize
the charging agents to form colored metallic oxides.
We conclude that the only reason for combining the references of record is a result
of the disclosure of the invention by the appellants. Based upon the above finding and
analysis, we conclude that the examiner has not established a prima facie case of
obviousness with respect to the aforesaid set of claims. See In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999) ("[T]he best defense against the
subtle but powerful attraction of a hindsight-based obviousness analysis is rigorous
application of the requirement for a showing of the teaching or motivation to combine
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