Appeal No. 2006-0182
Application No. 10/254,862
with Appellants that the examiner has not met his burden of showing prima facie
obviousness. We also remind the examiner that “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 of ordinary skill in the art.”
In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965); see also In re
Mercier, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778 (CCPA 1975).
Thus we do not find that the examiner has established a prima facie case of
obviousness, and the rejection of the claims for obviousness is reversed.
35 U.S.C. §112, second paragraph
Claim 5 stands rejected under 35 U.S.C. §112, second paragraph, for
indefiniteness.
The examiner asserts that the phrase, “said concentration” in claim 1 renders the
claim indefinite because it is not clear which component’s concentration is referenced
as claim 1 does not recite the term “a concentration.” Answer, pages 3 and 7.
Appellants respond, arguing that they agree that the recitation “a concentration
lacks antecedent basis” in claim 1, however, they argue one of ordinary skill in the art
would readily understand that claim 5 refers to the concentration of the solvent because
claim 5 limits the 5-40% weight range of claim 1 to 1 to 15%. Brief, page 4.
Appellants argue that such an interpretation of claim 5 is clear from a reading of
dependent claims 2 and 3 which also use the term “concentration” in reference to the
5
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