Appeal No. 95-0523
Application No. 07/885,490
substrates, to then inactivate or remove the enzymes, followed
by administering the pre-hydrolyzed compositions. Both of
these points bear directly on the determination of a prima
facie case of obviousness with respect to claims 1-23.
The examiner has an initial burden of establishing that
one of ordinary skill in the art would have found the claimed
invention to have been obvious at the time that it was made.
The evidence relied upon must support such a conclusion. As
was set forth in In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991):
Where claimed subject matter has been rejected
as obvious in view of a combination of prior
art references, a proper analysis under § 103
requires, inter alia, consideration of two
factors: (1) whether the prior art would have
suggested to those of ordinary skill in the
art that they should make the claimed composition
or device, or carry out the claimed process; and
(2) whether the prior art would also have
revealed that in so making or carrying out,
those of ordinary skill would have a reasonable
expectation of success.
Considering the rejection at issue, as is apparent from
the Response to Argument section of the Examiner's Answer, on
pages 5-10, such a proper analysis as is suggested in In re
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