In my last column, I discussed the first argument that should be made in overcoming an obviousness rejection made by the patent examiner in a patent application. If possible, the applicant should argue that the examiner has failed to establish a prima facie case of obviousness because the examiner did not make the required factual findings. However, there are several additional arguments that may be applicable.
First, in relying on prior art references for the rejection, the examiner cannot pick and choose only one aspect of a prior art reference and exclude other aspects of the reference or ignore the central teaching of the reference. “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 (CCPA 1965).
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