Appeal No. 2001-0690
Application No. 08/309,315
ordinary skill in the art would have combined the elements from the cited prior art
in a manner that would have resulted in appellants’ claimed invention.
The initial burden of presenting a prima facie case of obviousness rests
on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). On these circumstances, it is our opinion that the examiner
failed to provide the evidence necessary to support 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). Accordingly, we reverse the rejection of
claims 7 and 9-14 under 35 U.S.C. § 103 as being unpatentable over Margolis in
view of Akinaga.
Uckun
The examiner refers (Answer, page 4) our attention to the statement of
the rejection set forth in the Final Rejection. According to the examiner (Final
Rejection, page 5):
Uckun states that the cells were irradiated. Clearly, if cells are
irradiated, they are killed. On page 9006, column 1, the phrase
“[a]poptosis [a]ssays” is recited. This is further proof that Uckun
intended to kill the cells. In addition, on page 9008, column 1,
Uckun states that “these findings provide direct evidence that
ionizing radiation stimulates PTKs” and that “tyrosine
phosphorylation plays an important role in the initiation of apoptosis
in human B-lymphocyte precursors exposed to ionizing
radiation”….
According to appellants (Brief, page 8) “Uckun teaches that tyrosine
phosphorylation plays an important role in the initiation of apoptosis. Apoptosis
is a descriptive term for programmed cell death. Thus, according to Uckun, the
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007