Appeal No. 1996-1626
Application No. 07/642,848
body for optical parts” incorporating a “perylene or naphtalimide type dye.” We do not find that the
general statement in the reference’s Summary of the Invention (Page 2), or the language of the broadly
drafted claims, would have suggested to the artisan an optical disk having a fluorescent coloring
material, upon consideration of the disclosure in its entirety. As we have pointed out supra, the
fluorescent dye is disclosed as having useful applications which are limited to the particulars of optical
fibers and lighted displays.
It is impermissible within the framework of section 103 to 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.
In re Hedges, 783 F.2d 1038, 1041, 228 USPQ 685, 687 (Fed. Cir. 1986), quoting In re Wesslau,
353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965). The examiner has failed to deal with the
portions of the reference which indicate that the fluorescent dye is useful for applications that appear to
be irrelevant with respect to optical disk requirements.
Since we are in agreement with appellants’ first argument, and conclude that a prima facie case
of obviousness has not been established, we do not reach consideration of the second argument, which
is based on the claim language “consisting essentially of.”
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