Appeal No. 2005-1629
Application No. 10/001,256
disputed the improved properties shown (Brief, pages 13-15).
Therefore we begin anew and consider the totality of the record,
including evidence for and against obviousness. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
We determine that appellants’ evidence of non-obviousness is
not persuasive for the following reasons. First, Sano teaches
that the specific combination of penetrants as recited in claim 1
on appeal is “particularly preferred” (col. 8, l. 66-col. 9, l.
4), thereby evincing that improved results would have been
expected for this combination of surfactants/penetrants. See In
re Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA
1975)(“Expected beneficial results are evidence of obviousness of
a claimed invention, just as unexpected beneficial results are
evidence of unobviousness”). Even though maximum penetration is
not desired with the alginate-containing ink compositions of Sano
(col. 7, ll. 21-36), the maximum effect of penetrants was taught
by Sano as controllable by the amount used. Therefore achieving
the maximum effect of penetration by optimizing the amount of
penetrant in non-alginate or conventional ink compositions would
have also been well within the skill of the art. Second, the
cause and effect of the comparative testing is lost in the use of
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007