Appeal No. 93-2757
Application 07/908,856
essential oil obtained using fresh, frozen or dried flowers of
a tetraploid camomile as claimed in claim 1 or 2" (emphasis
added).
To sustain the examiner’s rejection of claim 14 under
35 U.S.C. § 102(b), it would be necessary to combine the
disclosures of Example 7 and claim 17 of the British patent.
This is improper. As stated in In re Arkley, 455 F.2d 586,
587-88, 172 USPQ 524, 526 (CCPA 1972):
Thus, for the instant rejection under 35 U.S.C.
§ 102(e) to have been proper, the Flynn reference
must clearly and unequivocally disclose the claimed
compound or direct those skilled in the art to the
compound without any need for picking, choosing, and
combining various disclosures not directly related
to each other by the teachings of the cited
reference. 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.
Accordingly, we shall not sustain the examiner’s rejection
under 35 U.S.C. § 102(b) because “such picking and choosing”
has no place in the making of a § 102 rejection.
Furthermore, GB 2 170 404 A expounds the importance of
drying camomile flowerheads during recovery of the drug. The
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007