Appeal No. 2002-1677 Page 8
Application No. 08/944,817
3, 6 to 9 and 14 to 16 under 35 U.S.C. § 102(b). For this rationale to have been proper,
Calvin must clearly and unequivocally disclose the claimed subject matter without any
need for picking, choosing, and combining various disclosures not directly related to
each other by the specific teachings of Calvin. Such picking and choosing may be
proper in the making of a 35 U.S.C. § 103, obviousness rejection, where the appellant
will be afforded an opportunity to rebut with objective evidence any rejection under
35 U.S.C. § 103, but it has no place in the making of a 35 U.S.C. § 102 anticipation
rejection. See In re Arkley, 455 F.2d at 587, 172 USPQ at 526.
For the reasons set forth above, the decision of the examiner to reject claims 1
to 3, 6 to 9 and 14 to 16 under 35 U.S.C. § 102(b) is reversed.
The obviousness rejection
We will not sustain the rejection of claims 4, 5, 10 and 11 under 35 U.S.C. § 103.
In the rejection of dependent claims 4, 5, 10 and 11 under 35 U.S.C. § 103, the
examiner determined (final rejection, p. 4) that the claimed rectangular grooves would
have been obvious at the time the invention was made to a person of ordinary skill in
the art.
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