Ex Parte Watanabe et al - Page 7



          Appeal No. 2005-1629                                                        
          Application No. 10/001,256                                                  

          composition can be normally inhibited by the use of a penetrant,            
          [but] the ink composition of the present invention can do [this             
          inhibition] by the alginate incorporated therein” (col. 4, ll. 8-           
          29).  Sano further teaches the disadvantage of the alginate,                
          which must be remedied by adding a liquid wetting agent (col. 5,            
          ll. 28-36).  Finally, Sano teaches that penetrating agents were             
          used before in certain critical concentrations to attain enhanced           
          penetrating power that lessens color bleeding, but with the use             
          of alginates it is not necessary that the penetrating power be              
          raised as high as for conventional ink compositions (col. 7, ll.            
          21-36).  Thereafter, Sano teaches the many well-known penetrating           
          agents useful in the art (col. 7, l. 37-col. 9, l. 4),                      
          specifically disclosing acetylene glycol surfactants (col. 8,               
          formula (V)), diethylene glycol monobutyl ether (col. 8, l. 53;             
          this is the same surfactant/penetrant exemplified by JP ‘525),              
          the preferred triethylene glycol monobutyl ether (col. 8, ll. 55-           
          57), as well as the most preferred combination of acetylene                 
          glycols and triethylene glycol monobutyl ether (col. 8, l. 62-              
          col. 9, l. 4; see also Example 6).  Accordingly, we determine               
          that one of ordinary skill in this art would have been motivated            
          to use any well known penetrating agent, as taught by Sano, in              
          place of the common penetrant diethylene glycol monobutyl ether             
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