Appeal 2007-1688
Application 10/222,617
reference. In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA
1972).
For the above stated reasons, we cannot sustain the Examiner's § 102
rejection of all appealed claims as being anticipated by Arkens.
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 Arkens. In this regard, we
emphasize that a claimed range, while not anticipated, may be rendered
obvious by an overlapping prior art range. In re Peterson, 315 F.3d 1325,
1329, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003). Similarly, 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 rejection.
In re Arkley, 455 F.2d at 587, 172 USPQ at 526.
In responding to this remand, the Examiner must provide the record
with an explanation of why the Arkens reference does or does not render the
claims on appeal unpatentable under 35 U.S.C. § 103(a).
This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) is
not made for further consideration of a rejection. Accordingly, 37 C.F.R.
§ 41.50(a)(2) does not apply.
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