Appeal No. 1999-0913
Application No. 08/723,330
disclosed or described in 'the prior art.'" In re
Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA
1972).
Thus, for the instant rejection under 35 U.S.C. § 102 to
have been proper, the reference must clearly and unequivocally
disclose the claimed subject matter or direct those skilled in
the art to the claimed subject matter without any need for
picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the cited
reference. Id. Such picking and choosing may be entirely
proper in the making of a § 103, obviousness rejection, where
the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may
arise from the similarity of the subject matter which he
claims to the prior art, but it has no place in the making of
a § 102, anticipation rejection. Id. Secondly, in Takeuchi,
the protective layer 34 is part of the hologram itself. Thus,
if the hologram of Figure 2 were to be placed on the substrate
of Figure 15, as the examiner suggests, the hologram on Figure
15 with its attached protective layer 34 would be removed.
Finally, we find persuasive appellant's comments that
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