Appeal No. 1997-2744
Application No. 08/243,520
THE REJECTION UNDER 35 U.S.C. § 103:
Initially, we note the examiner’s statement of the rejection (Answer, ¶ 11)
“[c]laims 15-23 are rejected under 35 USC 103. This rejection is set forth in the
prior Office action of September 20, 1994 paper number 18.” This statement
appears to be in error. Paper number 18 refers to a rejection of claims 1-12, not
claims 15-23. In fact this record never contained 23 claims. Furthermore, while
both the examiner’s Answer (¶ 13) and appellants’ Brief refer to the combination of
Isgaard and Mueller, Paper No. 18 sets forth a single rejection under 35
U.S.C. § 103 over Isgaard. Therefore, since the most recent Final Rejection5 of the
claims is more consistent with the arguments of the examiner and appellants we
believe the examiner intended to refer to this paper for the basis of the rejection.
With this clarification, we proceed to address the merits of the examiner’s rejection.
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). In satisfying this initial burden, “[i]t is impermissible within the framework
of section 103 to pick and choose from any one reference only so much of it as will
support a given position to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of ordinary skill in the art.”
In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In
re Mercier, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
The examiner finds (Answer, bridging paragraph, pages 3-4) that “Mueller
teaches that appellants’ active [sic] used to treat experimental rats [sic] used to
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007