Appeal No. 1996-1371
Application 08/221,595
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
inventions using applicants' claimed invention 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 suggestion for
combining the disclosure of these three references in a manner which would result in the
claimed toner or developer which includes a resin, a pigment and a charge enhancing
polyester having chemically attached thereto a moiety selected from the group of
sulfoisophthalates as claimed. The combination of an additional resin with the toner
composition of Sacripante would appear to be in conflict with the patentee's stated
intention as reflected in the statement at col. 4, lines 38-43 which provides:
With the process of the present invention addition type resins are avoided
and sulfonated polyesters resin particles are selected thereby enabling low
toner fusing temperatures and high gloss with nonvinyl offset properties, and
without the use of charge control agents. (Emphasis added).
Where, as here, the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir.1988). We, therefore, reverse the rejections of claims 1, 7, 8, 10, 14-19, 25, and
29 under 35 U.S.C. § 103.
SUMMARY
To summarize, the rejections of claims 1, 7, 8, 10, and 14-19 under 35 U.S.C. §
7
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