Appeal No. 97-0520
Application 08/248,307
modification. The examiner may not 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. See Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve
Inc., 796 F.2d 443, 448, 230 USPQ 416, 419 (Fed. Cir. 1986),
cert. denied, 484 U.S. 823 (1987) and In re Kamm, 452 F.2d 1052,
1057, 172 USPQ 298, 301-02 (CCPA 1972). While the examiner
opines that such a modification would provide a means for the
changing the information on the sign of Carmack, the mere fact
that this is the case does not serve as a proper motivation or
suggestion to combine the teachings of these references.
Instead, it is the teachings of the prior art which must provide
the motivation or suggestion to combine the references. See
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992).
From our perspective, the examiner has impermissibly relied
upon the appellant’s own teachings in arriving at a conclusion of
obviousness. As the court in Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988)
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