Appeal No. 1997-3944
Application No. 08/208,807
citation omitted]. We fail to see how the examiner finds, in this one sentence, that a
sufficient relationship exists between HPV and EBV to support the combination of
Bedell with Davis, Li and “appellant’s admission.” It is also unclear to us where in
the Bedell reference support is found for the examiner’s argument (Paper No. 16,
page 5) that Bedell “hypothesized … similarities between EPV and HPV.” We
remind the examiner that “it 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 skilled in the art.” In re Wesslau, 353 F.2d
238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re Mercer, 515 F.2d
1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
We further remind the examiner that “[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968). On the record before us, we find no reasonable suggestion for combining
the teachings of the references relied upon by the examiner in a manner which
would have reasonably led one of ordinary skill in this art to arrive at the claimed
invention. As appellants explain (Brief, pages 9-10) Davies and Li do not teach
HPV, nor does that portion of appellants’ specification relied on by the examiner.
Therefore, these teachings fail to make up for the deficiency of Bedell.
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