Appeal No. 2005-1629
Application No. 10/001,256
concludes that it would have been obvious to one of ordinary
skill in this art at the time of appellants’ invention to use the
penetrating agent taught as preferred by Sano in the ink jet ink
compositions of JP ‘525 or Anton (id.). We agree.
Appellants do not dispute the examiner’s factual findings
from the three applied references (see the Briefs in their
entirety). However, appellants argue that there is no motivation
established for combining the references as proposed by the
examiner (Brief, page 11; Reply Brief, page 2; Supplemental Reply
Brief, pages 2-4). Specifically, appellants argue that Anton
teaches that, although surfactants may be used to alter the
surface tension of the ink composition, as well as to maximize
penetration, “the type of surfactants and the amounts used need
to be carefully selected to avoid pigment dispersion
destabilization or to negate the benefits of the present inks”
(Brief, sentence bridging pages 16-17). Although appellants
admit that JP ‘525 discloses a specific penetrating agent “that
... arguably has a similarity to the claimed penetrating agent”
(Brief, page 17), appellants argue that the “main issue” is that3
the penetrating agents taught by Sano are designed specifically
See JP ‘525, ¶[0030], where it is taught that surfactants such as “diethylene glycol3
monobutyl ether” can be added to the ink compositions.
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