Appeal No. 2005-1629
Application No. 10/001,256
multiple variables. See In re Dunn, 349 F.2d 433, 439, 146 USPQ
479, 483 (CCPA 1965)(“The cause and effect sought to be proven is
lost here in the welter of unfixed variables”). See page 3 of
the Watanabe Declaration, where Comp. Ex. 2 employs only 5% of
the penetrant while the total amount of penetrant in the example
of the invention is 6% (compare Example 1, Ink Set A, with Comp.
Example 2, Ink Set G). Thus the results do not solely depend on
the difference in the penetrant but also in the amount of
penetrant. As previously discussed, the claims are not limited
to any amount of penetrant. Third, appellants have not explained
why the one specific example (Example 1, Ink Set A) is
commensurate in scope with the subject matter on appeal, since
the example is directed to a specific penetrant (Surfynol 104) in
a specific amount, a specific sulfonyl-containing diene with a
specific dispersant resin, and a specific pigment, while the
claims on appeal are not so limited. See In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980).5
Appellants argue that the examiner has not weighed the evidence of unexpected results5
against the factors giving rise to the alleged prima facie case of obviousness, but instead has
relied solely upon an inherency rationale (Supplemental Reply Brief, page 5). We determine that
the examiner has weighed the evidence of allegedly unexpected results but found these results to
be expected (Answer, page 10). See In re Skoner, supra. If the examiner, by stating that the
combination of references would “intrinsically improve gloss differential and glossiness”
(Answer, page 11), means that no showing of unexpected results is possible to overcome the
10
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