Appeal No. 1996-2960
Application 08/192,027
can not 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
inventions using applicants' disclosure 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 admitted state of the art which describes the printing of indicia or decorative
patterns or the use of color on the outside of the tissue (Specification, page 1) with the
teaching of Holbein, which relates to a laminated security paper, Brown, which discloses
carton board having indicia within the inner layers as a deterrent to counterfeiting, or
Amano, which relates to laminated decorative wall paper and packing paper having a
printed film laminated between the paper layers, in a manner to arrive at the claimed tissue
wherein one or more of the internal surfaces of the multiply tissue contains a colored or
patterned indicia, visible through at least on of said outer plies. Here the examiner fails to
provide any evidence which would have reasonably suggested, to those of ordinary skill in
this art at the time of the invention, the incorporation of the indicia or printed patterns used
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