Appeal No. 2007-0531 Page 6
Application No. 10/341,679
Further, while Tischer teaches (column 13, lines 28-32) that a VEGF
composition can be injected to the site of damaged cardiac muscle (e.g., into the
heart), Tischer does not teach that at least 2 multiple injections are administered
within about 10 minutes as is required by Appellants’ claimed invention. At best,
Tischer suggests the use of a micrometering pump over a period of time as an
alternative to injection to the site of damaged cardiac muscle (id.), but even then
fails to suggest multiple injections administered within about 10 minutes. We find
the only suggestion of timing comes from the Examiner’s assertion that
Hammond uses a multipurpose coronary catheter “that engages the coronary
arteries, apparently at about the same time.” Answer, page 4, emphasis added.
Therefore, even if a person would modify Hammond’s method with the teachings
of Tischer and inject an adenoviral construct into the heart, there is no evidence
of record directing a person of ordinary skill in the art to administer at least 2
multiple injections within about 10 minutes.
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). In our opinion, Examiner failed to provide the evidence
necessary to support a prima facie case of obviousness. If 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 1-4, 6, 7, 10, 12 and 18 under
35 U.S.C. § 103 as being unpatentable over the combination of Hammond and
Tischer.
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