Appeal No. 1996-1362
Application 08/234,074
surface treated silica for hydrophobic surface treated titania in a toner composition
wherein the silica particles have been treated or coated with an aliphatic alcohol have 16
to 18 carbon atoms in the carbon chain as presently claimed. The initial burden of
persuasion rests on the patent examiner to establish that claims presented in an
application for patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). To establish a prima facie case of obviousness, there must
be more than the demonstrated existence of all of the components of the claimed subject
matter. There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the substitutions
required. That knowledge cannot come from the applicants' invention itself. Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir.
1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). The extent to which such suggestion must be explicit in or may be fairly inferred
from, the references, is decided on the facts of each case, in light of the prior art and its
relationship to the invention. It is impermissible, however, simply to engage in a hindsight
reconstruction of the claimed invention using applicants' specification as a template and
selecting elements from references to fill the gaps. In re Gorman, 933 F.2d 983, 986-987,
18 USPQ2d 1885, 1888 (Fed. Cir. 1991). On the record before us, we find no reasonable
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