Ex parte LAW et al. - Page 8

              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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