Appeal No. 1997-3135
Application 08/208,497
established that a person having ordinary skill in the art would have reasonably expected
that applicants' 2-phenyl-3-oxo-2H-1,4-benzothiazine compounds would be useful in a
method for treating glaucoma.
The examiner's error, we believe, stems from focusing on those portions of Abelson
which support the rejection under 35 U.S.C. § 103 but ignoring other portions of the
reference which do not support the rejection. In other words, the examiner misapprehends
the scope and content of the prior art, considerably overstates the significance of Abelson,
and does not adequately evaluate the Abelson reference in its entirety. As stated in In re
Hedges, 783 F.2d 1038, 1049, 228 USPQ 685, 687 (Fed. Cir. 1986), quoting from In re
Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965),
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.
Accordingly, on this record, the examiner has not established a prima facie case of
obviousness of the appealed claims. We find it unnecessary to discuss the Yamauch
declaration, dated November 14, 1994, relied on by the applicants as rebutting any such
prima facie case.
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