Appeal No. 2003-1476 Page 5
Application No. 09/291,983
hacksaws and thus is entitled to less weight than the teaching away in Wells, which is
directed to the field of handsaws (brief, page 6).
As pointed out above, Wells explicitly emphasizes that the curved characteristic
and the tubular characteristic of the reach in combination are required to achieve the
degree of elasticity and strength which is the objective of Wells’ invention. Thus, we
agree with appellant that Wells would have suggested provision of an arcuate and
tubular frame member on a saw and would not have suggested provision of an arcuate
portion in combination with an I-beam construction on David’s hacksaw. The examiner
may not pick and chose 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 of ordinary skill in the art (Bausch & Lomb, Inc., v.
Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 448, 230 USPQ 416, 419 (Fed. Cir. 1986),
cert. denied, 484 U.S. 823 (1987) and In re Kamm, 452 F.2d 1052, 1057, 172 USPQ
298, 301-02 (CCPA 1972)).
As for the examiner’s taking of Official Notice that it was well known in the art to
alleviate the problem of stress concentrations at corners or sharp bends by either
overdesigning by using a stronger material or additional material or designing the
component without sharp corners or bends to eliminate stress concentrations, this is
insufficient to provide suggestion to modify David’s saw frame to provide an arcuate
portion from the forward end portion to the maximum height portion as called for in
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