Appeal No. 95-0222
Application 08/145,553
We have carefully reviewed the record before us, including
each of the arguments and comments advanced by appellants and the
examiner in support of their respective positions. This review
leads us to conclude that the examiner's rejection of claims 15
through 34 under § 103 is not well-founded. Accordingly, we will
reverse the examiner's rejection. Our reasons for this
determination follow.
In making a rejection under § 103, the examiner has the
initial burden of supplying the factual basis for his or her
position. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178,
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). That burden can
be satisfied if the examiner supplies prior art references which
would have reasonably suggested to one of ordinary skill in the
art the claimed invention. In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984). However, it is impermissible
within the framework of 35 U.S.C. § 103 to pick and choose from
the prior art references only those portions which will support a
given position without considering what each prior art reference
would have fairly suggested to one of ordinary skill in the art.
In re Hedges, 783 F.2d 1038, 1041, 228 USPQ 685, 687 (Fed. Cir.
1986).
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