Appeal No. 95-0420
Application 07/959,509
Appellants' Reply Brief. Rather, we restrict our review to the stated rejection of record,
based on the combined disclosures of Selden and Tsang. That rejection falls short of the
mark in view of the claim limitation requiring a human cell line which has been "stably
transformed" by a recombinant vector, and that rejection is reversed.
Third, we refer to the Zavodny Declaration executed March 25, 1993, filed under
the provisions of 37 CFR 1.132. The Zavodny Declaration and its attachments constitute
objective evidence of non-obviousness, relied on by Appellants to rebut any inference of
obviousness which may be established by the cited prior art. As correctly pointed out by
Appellants, however, the examiner does not come to grips with this rebuttal evidence. See
the main Brief, page 11; and the Reply Brief, page 3. Having reviewed the Examiner's
Answer and the supplemental Answer, we find no indication that the examiner stepped
back and reevaluated patentability in light of the objective evidence set forth in the Zavodny
declaration. In and of itself, this constitutes reversible error. As stated 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.
[citations omitted].
This the examiner did not do.
The rejection of claims 1 through 17 under 35 USC § 103 as unpatentable over the
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