Appeal 2007-0105
Application 10/698,607
decide this appeal based on appealed claims 6, 7 and 24 as representative of
the grounds of rejection. 37 C.F.R. § 41.37(c)(1)(vii) (2005).
With respect to independent claim 6 as well as claim 7, the Examiner
contends Idogawa’s method includes the step of admixing, among other things,
“a carboxyl group-containing vinyl monomer, which falls within the scope of
the instant unsaturated monomer containing a convertible moiety in
hydrophobic form, in light of the interpretation of appellant’s preferred
‘convertible moiety-containing monomer’ embodiment disclosed in the
specification (col. 3, line 59 to col. 4, line 6; col. 6, lines 26-40)” (Answer
3 and 6). The Examiner contends this monomer is 2-methacryloyloxyethyl
succinate, trade name “Acryl Ester SA,” which is exemplified in Idogawa in
the context of emulsion polymerization (id.). With respect to dependent
claim 24, the Examiner acknowledges Idogawa “is silent regarding the
recited step of converting the convertible moiety to a hydrophilic form,” but
finds the reference “discloses the inclusion of pH controller within the scope
of the appellant’s converting agents defined in the specification (i.e. organic
and inorganic bases) in the resultant ink composition (col. 8, lines 35-42)”
(id. 5). The Examiner contends Idogawa’s “teaching embraces appellant’s
method of converting the convertible moiety to a hydrophilic form as
interpreted in light of appellant’s disclosure” (id. 5 and 7).
With respect to claim 6, Appellant contends Idogawa uses the
hydrophilic form of the convertible moiety containing vinyl monomer
2-methylacryloyloxyethyl succinate because the reference discloses “a
hydrophilic monomer alone . . . ‘cannot be emulsion-polymerized in many
cases, and the vinyl monomer mixed with a hydrophobic vinyl monomer is
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