Appeal No. 1998-3386
Application No. 08/265,698
Aramide Maatschappij v.o.f. v. United States Int=l Trade Comm=n, 808 F.2d 1471,
1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986). The Lackner reference is directed
to demonstrating “the involvement of Mn3+ and manganese peroxidase in the
biodegradation of chlorolignin by P. chrysosporium” (Lackner, page 1093, first full
paragraph). Thus in contrast to the examiner’s position, the whole purpose of the
dialysis tubing in Lackner was to separate some of the reagents involved in the
biodegradation of chlorolignin to identify the active agents. For example, Lackner
state (page 1095) “[t]herefore, it seemed likely that mycelium bound manganese
peroxidase might play an important role in bleach plant effluent degradation. To
show this, we performed subsequent experiments during which the high molecular
weight chlorolignin was not added directly to the cultures but packed into dialysis
tubings….” In fact, Lackner teach (page 1094) the lignin, “waste,” and the
peroxidase together in a “semicontinuous culture.” Thus, in contrast to the
examiner’s position, it appears to us that removing the tubing would not defeat “the
whole purpose of Lackner.”
We remind the examiner that “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 skilled in the art.” In re
Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re
Mercier, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975). Instead,
obviousness can only be established by combining or modifying the teachings of the
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