Appeal 2007-0292
Application 10/115,802
skilled in the art to the compound without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the reference). Even if Armand's formula were modified with
the member selections suggested by the Examiner, the resulting compound
still would not be encompassed by the appealed claims. This is because
Appellants' claimed compounds would result only by additionally selecting
stoichiometric coefficients which satisfy Armand's multiple conditions as
well as the conditions of the independent claims on appeal.
Under these circumstances, we also cannot sustain the § 102 rejection
based on Armand of all appealed claims.
REMAND
We remand this application to the Examiner for consideration of
whether any one or all of the claims on appeal should be rejected under
35 U.S.C. § 103(a) as being obvious over Armand.
In this regard, we emphasize that the act of picking, choosing, and
combining various disclosures in a reference, while improper in a § 102
rejection, may be entirely proper in a § 103. In re Arkley, 455 F.2d at 587,
172 USPQ at 526.
Specifically, the Examiner must consider whether it would have been
obvious for one with ordinary skill in this art to select from Armand's
general formula the members and stoichiometric coefficients which satisfy
the conditions of both Armand and the appealed claims. Furthermore,
although the Examiner in the Answer has focused on the phosphate variants
of Armand's general formula, the sulfate (and other) variants also should be
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