Wednesday, March 13, 2013

On picking and choosing from a prior art disclosure

Frm Ex parte Brown

The preponderance of the evidence favors Appellants’ argument and
evidence of novelty. The Examiner’s rejection fails to direct us to a teaching
in Schlak where the claim elements, including the inherently disclosed rigid
feature, are arranged as in the claims. Therasense Inc. v. Becton, Dickinson
& Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Rather, the Examiner picks
and chooses various discrete and distinct teachings of the Schlak reference to
arrive at the claimed rigid, open cell polyurethane foam. Picking and
choosing various distinct disclosures may be entirely proper in formulating
an obviousness rejection, but is not appropriate for an anticipation rejection
which requires identical disclosure or description. In re Arkley, 455 F.2d
586, 587-88 (CCPA 1972).


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