Ex Parte Ylitalo et al - Page 6



          Appeal No. 2005-0622                                                        
          Application 09/911,279                                                      
                                                                                     
          Held and Caiger to obtain the disclosed benefits of Savu=s                  
          surfactant relative to the C8 fluorinated surfactants of Held and           
          Caiger.                                                                     
               Savu teaches that the disclosed surfactant is useful as a              
          leveling additive for various resist inks for electronics and               
          semiconductors, and for inks such as gravure coat, screen print,            
          thermal print and pen inks (page 25, lines 17-19 and 25).  This             
          disclosure would have provided one of ordinary skill in the art             
          with a reasonable expectation of success in using Savu=s                    
          surfactant in other ink compositions, such as the inkjet ink                
          compositions of Held and Caiger.                                            
               The appellants question why one of ordinary skill in the art           
          would have been motivated to substitute Savu=s surfactant for               
          those of Held and Caiger, given the disclosures by Held and                 
          Caiger that their C8 surfactants are acceptable, and particularly           
          given the disclosure by Held of using the C6-22 fluorinated                 
          surfactants in combination with a siloxane surfactant (brief,               
          pages 15-16 and 21; reply brief, page 4).  The motivation would             
          have been to obtain the above-discussed benefits disclosed by               
          Savu of using Savu=s surfactant instead of a C8 surfactant.                 


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