Appeal No. 1996-2690
Application 07/967,787
reasonably suggests the use of a crosslinking agent in a process of the type claimed
wherein the crosslinking agent would be expected to exhibit second order nonlinear optical
properties upon exposure to an electric field. The molecules referenced by the examiner
are not disclosed as being useful as separate and distinct crosslinking agents in a
process wherein a host polymer has a second order nonlinear optical component
covalently bonded thereto. In fact, Ulman suggests that the use of such molecules "permits
a separate binder to be eliminated or employed on a (sic, an) optional basis" (Column 37,
lines 60-61). That the disclosure of Ulman could conceivably be modified to arrive at the
claimed invention is insufficient to establish a prima facie case of unpatentability absent
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 modification required. That knowledge
cannot come from the appellant's 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
inventions using appellants' claimed invention as a template and selecting elements from
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