Appeal No. 2001-2524 Page 9
Application No. 08/369,295
identified and “other epitopes shared by many of the group A streptococcal M
serotypes may form the basis for synthetic vaccines that can elicit
crossprotective antibodies against multiple M serotype infection or that can be
used as reagents for the identification of M protein-containing streptococci.” See
also Brief, page 16.
In view of this evidence, appellant argues (Brief, page 17) Jones suggests
“not that the disclosed peptides would be usefully combined in a therapeutic or
diagnostic compostion, but that the disclosed peptides were incapable of eliciting
the production of opsonic antibodies and were thus non-functional.” Therefore,
appellant concludes (Brief, page 18) that Jones teaches away from the present
invention. We agree.
In satisfying this initial burden, “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 Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
Instead, in determining whether the claimed invention is obvious, a prior art
reference must be read as a whole and consideration must be given where the
reference teaches away from the claimed invention. Akzo N.V., Aramide
Maatschappij v.o.f. v. United States Int’l Trade Comm’n, 808 F.2d 1471, 1481,
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