Ex Parte CHENG et al - Page 8


          Appeal No. 2002-0178                                                        
          Application 09/385,909                                                      

          VI.  The rejection of claim 26 under 35 U.S.C. § 103 over Collins           
               in view of Breton                                                      
               Claim 26 concerns the particle size distribution of the                
          colorant.  The examiner relies upon Breton for teaching a                   
          particle size distribution wherein at least about 90% of the                
          pigment particles have a diameter of about 0-1 µm with the                  
          remaining pigment particles being a diameter of about 1.0µm.  See           
          column 4, lines 13-16.  As stated by the examiner on pages 9-10             
          of the answer, the motivation for using such a size pigment is to           
          prevent the ink from clogging the printer nozzles.  We find such            
          motivation sufficient, and hence, affirm this rejection.                    

          VII. The rejection of claim 29 under 35 U.S.C. § 103 over Collins           
               in view of Wong ‘695                                                   
               Claim 29 depends upon claim 28, and claim 28 recites the               
          addition of ink additives.  Claim 29 recites specific kinds of              
          additives and amounts.  As pointed out by the examiner on page 10           
          of the answer, Wong ‘695 discloses the use of surfactants such as           
          polyethylene glycol monolaurate, etc., and refers to column 4,              
          lines 42-48.  We note also that Collins, at column 3 beginning at           
          line 44, indicates that the ink compositions of the invention may           
          also contain “common ink additives” such as surfactants.                    
          Therefore, the utilization of the specific kind of surfactants              
          disclosed in Wong as the surfactants disclosed in Collins would             
          have been obvious to one of ordinary skill in the art in view of            
          the fact that Collins teaches that common ink additives include             
          surfactants and in view of the fact that Wong ‘695 teaches the              
          specific kind of surfactants are known.                                     
               Hence, we affirm this rejection.                                       

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