Appeal No. 2005-1629
Application No. 10/001,256
in the non-alginate containing inks disclosed by JP ‘525. See In
re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA
1982)(“Express suggestion to substitute one equivalent for
another need not be present to render such substitution
obvious”). It would have been equally obvious to use any of the
well known penetrants taught by Sano in the ink composition of
Anton which does not contain alginates, especially in view of
Anton’s teaching regarding the type and amount of surfactant,
since Sano also teaches the controlled addition of
surfactants/penetrants depending on the amount (Anton, col. 8,
ll. 40-46; Sano, col. 7, ll. 21-36).4
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness in view of the reference evidence. In rebuttal
appellants argue evidence of unexpected results (Brief, pages 13-
15 and 17; Reply Brief, pages 4-5; Supplemental Reply Brief, page
5). Appellants argue that the Declaration under 37 CFR § 1.132
by Watanabe dated Nov. 10, 2003, compares the closest prior art
(JP ‘525) with the claimed invention and the examiner has not
We also note that the claims on appeal do not recite any amount of the “ultra-penetrating4
agent,” even though appellants’ specification teaches that in low amounts the combination of
claimed penetrants does not have sufficient penetrating ability (specification, page 23, ll. 1-10).
8
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