Appeal No. 2001-1148 Page 3
Application No. 09/114,552
Capecchi, "Targeted Gene Replacement," Scientific American, Vol. 270, No. 3, pp.
34-41 (March 1994);
Sista et al. (Sista), "A cell-based reporter assay for the identification of protein
kinase C activators and inhibitors," Abstract from Mol Cell Biochem, 141(2):
129-34; (1994)
Dubuc, "The development of obesity, hyperinsulinemia, and hyperglycemia in ob/ob
mice," Abstract from Metabolism, 25(12):1567-74 (1976).
Claims 11-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kress, Kitamoto, Sista, Tartaglia, Dubuc, Halaas, Cusin, and
Capecchi.
DISCUSSION
The initial burden rests with the examiner to establish a prima facie case of
obviousness of the claimed invention over Kress, Kitamoto, Sista, Tartaglia, Dubuc,
Halaas, Cusin, and Capecchi. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). “To establish a prima facie case of obviousness
based on a combination of references, there must be some teaching, suggestion or
motivation in the prior art to make the specific combination that was made by the
applicant.” In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir.
1998). We fail to find such a suggestion. Instead, we find that, through hindsight,
examiner has located various elements of the claims in the prior art and pieced
them together to arrive at the claimed invention.
Our discussion will focus on claim 11 as representative of the claims on
appeal. All the claims on appeal depend from claim 11.
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