Appeal No. 2006-0070 Παγε 5
Application No. 10/024,631
Hill further states (column 17, lines 1-11 and 56-59) that:
The high flavor levels which can be pleasantly
incorporated into emulsion coatings of this
invention...For example, natural and synthetic flavor
and sweetener agents as diverse as menthol, xylitol and
glycyrrhizin are known to be beneficial towards plaque
control...
...
In addition to the buffering ingredients, the
[emulsion coating] compositions of the invention can
optionally contain at least one humectant selected from
the group consisting of glycerine, xylitol, sorbitol
and propylene glycol.
To arrive at the invention recited in the claims on appeal, one
of ordinary skill in the art would have to pick and choose from a
relatively broad disclosure of a large number of optional
substances. Such picking and choosing has no place in making a
Section 102 rejection for anticipation. Arkley, 455 F.2d at 587-
88, 172 USPQ at 526; In re Schaumann, 572 F.2d 312, 315, 197 USPQ
5, 8 (CCPA 1978). Accordingly, we reverse the examiner’s
rejection of claims 1 through 22, 25 through 27, 30 through 34
and 37 under 35 U.S.C. § 102(b).
REMAND
Although some picking and choosing may have no place in
making a Section 102 rejection, it may be entirely proper in
making an obviousness rejection under Section 103. Arkley, 455
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