Appeal No. 1997-2515
Application No. 08/221,767
obtained as a result of that search. In re Deuel, 51 F.3d 1552, 1558,
34 USPQ2d 1210, 1215 (Fed. Cir. 1995).
Finally, the examiner’s statement (Answer, page 10) that “[a]bsent any
change in the functional characteristics of the HCR, removal of extraneous
sequences would have been obvious optimization of parameters, which one of
ordinary skill in the art would have carried out in order to reduce the size of the
construct,” improperly applies an obvious to try standard to the claimed invention.
Obvious to try, is not the standard for determining obviousness under 35 U.S.C. §
103. In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
Therefore, in our opinion, the examiner failed to demonstrate that the
specific nucleotide sequence identified as SEQ ID NO:1 is present in the 5,700
nucleotide sequence of Simonet and functions as an enhancer as claimed.
Accordingly, the examiner failed to meet the limitation of an HCR enhancer of SEQ
ID NO:1 or a biologically active fragment thereof.
The examiner’s reliance on Smith, Mukaida, Finch and Matsushima fail to
make up the deficiencies found in Simonet.
For these reasons the examiner has failed to establish a prima facie case of
obviousness. Where the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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