Appeal No. 2005-1629
Application No. 10/001,256
for an alginate-containing ink composition, which alginate
mitigates the effects of the penetrating agent, and thus there is
no motivation to use the penetrants of Sano in the inks of
another composition which does not contain alginates (Brief,
pages 12-13; Reply Brief, page 4; Supplemental Reply Brief, pages
3-4). Appellants further argue that Sano “teaches away” from the
use of penetrants by cautioning that the coloring properties of
the recorded image can be enhanced by reducing the penetration of
a conventional ink (Brief, pages 12-13).
Appellants’ arguments are not persuasive. As clearly taught
by Sano, the use and amount of additives for any ink composition
involves a balancing or trade-off of properties. As correctly
quoted by appellants (Brief, pages 12-13), Sano teaches that in
general it is preferred to inhibit the penetration of the ink to
enhance the coloring properties (col. 1, ll. 25-27). However,
Sano then teaches that it is also preferred to enhance the
penetrating capacity of the ink in order to lessen or eliminate
color bleeding (col. 1, ll. 27-29). Sano explains this trade-off
between color bleeding and enhancing coloring properties at col.
1, l. 50-col. 2, l. 5. Sano also teaches the effect of adding an
alginate to the ink composition, namely “a phenomenon such as
lateral development or vertical penetration of the ink
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