Appeal No. 1996-2756
Application No. 07/987,235
In our opinion, in this context, Izant provides nothing more than an invitation to
experiment to develop a better understanding of anti-message inhibition. As set
forth in In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir.
1988) “what was “obvious to try” was to explore a new technology or general
approach that seemed to be a promising field of experimentation, where the prior
art gave only general guidance as to the particular form of the claimed invention or
how to achieve it.” However, “obvious to try” is not the standard for obviousness
under 35 U.S.C. § 103.
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 the record before us, we find no suggestion to combine the
teachings of the references relied upon by the examiner in a manner which would
have reasonably led one of ordinary skill in this art to arrive at the claimed invention.
Therefore, in our opinion, the examiner has 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).
We further note the declaration of Roth, Mukhopadhyay and Tainsky. In view
of this declaration appellants argue (Brief, page 15) that “the declarants reported
that an intron-containing antisense construct according to the present invention was
significantly more effective at inhibiting tumor cell proliferation than an intronless
construct.” Appellants further argue (id.) that “the declaration demonstrates that
constructs according to the present invention were significantly less toxic to cells
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