Appeal No. 1996-1371
Application 08/221,595
colorant.
It is the initial burden of the patent examiner to establish that claims presented in an
application for a patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). We have carefully considered the evidence and discussion
in support of the rejection presented by the examiner. However, a fair evaluation of the
references, applicants' specification and consideration of the claimed subject matter as a
whole, dictates a conclusion that the construction of the claimed subject matter from the
prior art teachings provided by Sacripante, Alexandrovich and Diamond is not suggested
by the record before us. 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
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