Appeal No. 2003-0443 Page 4
Application No. 09/465,653
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)
(citations omitted). The suggestion to combine prior art references must come
from the cited references, not from the application’s disclosure. See In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
On this record, the examiner has selectively chosen parts of the prior art
that support her position, while excluding other parts which lead to an equally
viable, yet distinct composition than that claimed. In this regard, we remind the
examiner “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).
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