Appeal No. 95-3082
Application No. 08/117,546
invention” (answer, page 4). However, we do not agree with8
the examiner that the list of compounds in claim 4 of Hosaka
is such a size that a skilled artisan would readily envisage
the subject matter on appeal because the term “esters” in
Hosaka includes more compounds than the “phenol esters” of the
appealed claims. The selection of phenol esters from the
various esters disclosed in Hosaka by one of ordinary skill in
the art would necessitate picking and choosing and combining
various disclosures not taught by the reference. This picking
and choosing is proper for a rejection under § 103 but
improper for a rejection under § 102. In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972).
The examiner bears the initial burden of presenting a
prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); see also In
re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3
(Fed. Cir.
8See In re Sivaramakrishnan, 673 F.2d 1383, 1384-85, 213
USPQ 441, 442 (CCPA 1982); In re Schaumann, 572 F.2d 312, 315-
16, 197 USPQ 5, 8-9; and In re Petering, 301 F.2d 676, 681,
133 USPQ 275, 280 (CCPA 1962).
9
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