Appeal No. 2003-0891
Application 09/011,614
amounts that would overlap or fall within the ratio of styrene compound to fatty compound and
solids content specified in the appealed claims (e.g., col. 1, line 52, to col. 3, line 34, col. 3, lines
52 and 67, and col. 4, lines 7-8). With respect to the matter of the “stain test” limitation in
appealed claim 11, Imagawa discloses that when the amount of the fatty compound “is too large,
the resultant ink composition writes badly or it stains a writing surface” (col. 3, lines 17-23).
Accordingly, we agree with the examiner that prima facie one of ordinary skill in this art
routinely following the teachings of Imagawa would have reasonably arrived at compositions
falling within appealed claim 11 without recourse to appellants’ disclosure. See generally, Merck
& Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-46 (Fed. Cir.
1989) (“That the ‘813 patent discloses a multitude of effective combinations does not render any
particular formulation less obvious. This is especially true because the claimed composition is
used for the identical purpose.”); In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815-16 (CCPA
1964) (“Generally speaking there is nothing unobvious in choosing ‘some’ among ‘many’
indiscriminately.”). With respect to appealed dependent claims 14 through 20 and 22
through 29, we find that prima facie Imagawa would have reasonably disclosed to one of
ordinary skill in this art triglycerides of higher fatty acids (e.g., col. 2, line 61) as well as fatty
compounds and styrene compounds within the specified molecular weight ranges, and fatty to
styrene ratios as well as solids contents required by these claims. The aqueous dispersion ink
compositions so disclosed are taught by the reference to be useful in a process of coating
impervious substrates, which would include such substrates encompassed by appealed claims 20
and 29.
Accordingly, since a prima facie case of obviousness has been established over Imagawa,
we have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellants’ arguments in the brief.
See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellants submit that the rejection under § 103(a) over Imagawa is in error for three
reasons. First, appellants contend that the fatty compound and the styrene compound “are not
compatible and form two separate layers when applied to a substrate,” thus causing “staining by
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