Appeal No. 2005-1629
Application No. 10/001,256
Appellants request rehearing based on four issues, labeled as I, II, III and IV on
pages 2-7 of the Request. We do not find appellants’ arguments regarding these issues
to be persuasive of error in our Decision. We present our reasoning in support of this
determination below, treating each issue in the order presented in the Request.
With regard to issue I, appellants argue that the Board has misapprehended the
teachings in Sano, “which do not suggest that the subject penetrating agent is useful for
other ink compositions” but rather is specifically directed to alginate-containing ink
compositions (Request, pages 2-3, citing Sano, col. 4, ll. 24-29, and col. 7, ll. 21-36).
This is the identical argument presented by appellants in their Brief, Reply Brief, and
Supplemental Reply Brief (see the sentence bridging pages 5 and 6 of the Decision),
and we incorporate our response from the Decision (pages 6-8). Appellants have not
argued or disputed the rationale espoused in our Decision, namely that Sano teaches
the balancing or trade-off of properties for all additives, especially penetrants, in ink
compositions (id.). We further note that appellants have cited but not disputed the
teaching of Sano 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 (Decision, page 7, citing Sano, col. 7, ll. 21-36).
This teaching of Sano would have clearly led one of ordinary skill in the art to use the
penetrants taught by Sano in conventional ink compositions, varying the amounts to
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