Appeal No. 1996-2756
Application No. 07/987,235
than the closest prior art.” In response, the examiner argues (Answer, bridging
paragraph, pages 9-10) that “[i]t is noted that the declaration is directed to support
claims to a composition, not claims to a method. The antisense oligonucleotides
used in the declaration would have been obvious to the ordinary artisan at the time
of the instant invention for the reasons given above….” In our opinion, the examiner
has not adequately addressed appellants’ declaration. We remind the examiner
that a conclusion of prima facie obviousness does not end a patentability
determination under 35 U.S.C. § 103. As set forth in In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the
matter are to be reweighed. In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
To the extent that the examiner argues that the declaration is not relevant to
the composition, we note that “[f]rom the standpoint of patent law, a compound and
all of its properties are inseparable; they are one and the same.” In re Papesch,
315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). In this regard, the examiner
should have reevaluated her prima facie case after full consideration of the
declaration, along with entirety of the facts and arguments of record. Even had a
prima facie case of obviousness had been made in the first instance, in view of the
evidence of record, such a prima facie case of obviousness of record would not be
sustainable.
Accordingly, we reverse the rejection of claims 12, 13, 16, 25 and 30-32
under 35 U.S.C. § 103 as being unpatentable over Weinberg in view of Izant.
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