Appeal No. 2001-0120 Page 4
Application No. 08/695,393
Specifically, Bockow sets forth a number of different ailments upon which
Bockow’s topical pharmaceutical preparation may be useful in treating. See col.
13, lines 40-57 and claim 1. Further, in the treatment of “burns, insect bites or
stings, sunburn, and the like” Bockow disclose that “[e]xemplary local anesthetics
are benzocaine, dibucaine, benzyl alcohol, dibucaine hydrochloride, lidocaine,
pramoxine hydrochloride, tetracaine, and tetracaine hydrochloride.” Col. 13,
lines 58-64. Bockow discloses that adjuvants such as thickeners, emulsifiers,
humectants, antibacterials, emollients, etc. may be included in the
pharmaceutical preparation “so long as the adjuvants are suitable for topical use
and do not disrupt the structure and/or function of the oil composition.” Col. 11,
lines 45-55. Assuming that a person of ordinary skill would include an adjuvant
in the pharmaceutical composition taught by Bockow, and more specifically an
emusifier, Bockow discloses an extensive list of possible emulsifiers, one of
which is sodium lauryl sulfate. Col. 11, line 66 to Col. 12, line 14.
On this record, it is our opinion that the examiner failed to provide the
evidence necessary to establish that a person of ordinary skill in the art would
have selected from the extensive number of potential choices set forth in
Bockow, the specific elements required by appellant’s claimed invention. We
remind the examiner, in deciding the question of obviousness under 35 U.S.C.
§103, it is not realistic 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 references fairly suggests to one of ordinary
skill in the art. In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA
1965); see also In re Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778
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