Appeal No. 2001-1251 Page 5
Application No. 08/369,865
1920 (Fed. Cir. 1989). As set forth in In re Arkley, 455 F.2d 586, 587, 172 USPQ
524, 526 (CCPA 1972):
picking and choosing may be entirely proper in the making of a
103, obviousness rejection, where the applicant must be afforded
an opportunity to rebut with objective evidence any inference of
obviousness which may arise from the similarity of the subject
matter which he claims to the prior art, but it has no place in the
making of a 102, anticipation rejection.
On this record, the examiner identified references with broad general
disclosures and then, apparently using appellants’ claimed invention as a guide,
selected from the teachings provided in these general disclosures to arrive at
appellants’ claimed invention. Under these circumstances we are constrained to
reverse the rejection of claims 2-8 under 35 U.S.C. § 102(a) and
§ 102(b).
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
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