Appeal 2006-2507
Application 10/106,473
Answer 7-8.
Appellants assert that claim 39 requires the mixing of three separate
components: a magnetite dispersion, a colorant dispersion, and a latex
emulsion. According to Appellants, Kmiecik-Lawrynowicz refers to
magnetite and carbon black only as "colorants" and, therefore, the artisan
reading this reference would mix the magnetite and carbon black together as
one dispersion (the colorant dispersion) whereas claim 39 recites their use as
two separate dispersions. Appellants argue that absent a finding of
motivation in the prior art, the Examiner’s assertion that the use of either a
combined dispersion or two separate dispersions is a matter of design
choice, is insufficient to establish obviousness. Br. 4.
“It is prima facie obvious to combine two compositions each of which
is taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose.” In re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Kmiecik-Lawrynowicz teaches that “usefull [sic] colorants or pigments
include carbon black, magnetite, or mixtures thereof” (col. 10, ll. 46-47) and
that “additional useful colorants include pigments in water-based
dispersions” (col. 11, ll. 16-17) (emphasis added). Kmiecik-Lawrynowicz
further discloses that “[c]olorants, include pigment, dye, mixtures of
pigment and dyes, mixtures of pigments, mixtures of dyes, and the like”
(col. 12, 11.9-11). Thus, relying on Appellants’ own reasoning, the artisan
reading Kmiecik-Lawrynowicz would be motivated not only to mix the
magnetite and carbon black together as one dispersion, but also to mix
together two “pigment in water-based dispersions”, i.e., a magnetite
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007