Appeal No. 2001-0733 Page 6
Application No. 09/095,429
acid has been mutated such that certain defined amino acids of SEQ ID NO: 1
contain an amino acid residue other than that specified by SEQ ID. NO: 1,
wherein the changes are particularly defined in the body of the claim.
We can now address the patentability issue under 35 U.S.C. § 103(a)
based on the above interpretation of the claim. The burden is on the examiner to
make a prima facie case of obviousness, and the examiner may meet this
burden by demonstrating that the prior art would lead the ordinary artisan to
combine the relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). The findings of fact underlying the obviousness rejection, as
well as the conclusions of law, must be made in accordance with the
Administrative Procedure Act, 5 U.S.C. 706 (A), (E) (1994). See Zurko v.
Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821, 50 USPQ2d 1930, 1934
(1999). Findings of fact underlying the obviousness rejection, upon review by
the Court of Appeals for the Federal Circuit, must be supported by substantial
evidence within the record. See In re Gartside, 203 F.3d 1305, 1315,
53 USPQ2d 1769, 1775 (Fed. Cir. 2000). In addition, in order for meaningful
appellate review to occur, the examiner must present a full and reasoned
explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338, 1342, 61
USPQ2d 1430, 1432 (Fed. Cir. 2002).
In this case, it is hard to determine what is in fact the examiner’s position
in the statement of the rejection. Appellants argue that the examiner is relying
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