Appeal No. 95-2319
Application 07/812,880
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). Therefore, the rejection of claims 1-3,
9, 15, 16, and 21 under 35 U.S.C. § 103 over Evans and Stryer is reversed.
Claims 4-8, 10-13 and 17-21:
Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over Evans, in view
of Stryer in further view of Shackleford.
Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over Evans in view
of Stryer in further view of Piccini.
Claims 5-8 and 17-21 stand rejected under 35 U.S.C. § 103 as unpatentable over
Evans in view of Stryer in further view of Jones.
Claims 10-13 stand rejected under 35 U.S.C. § 103 as unpatentable over Evans in
view of Stryer in further view of Logan.
In rejecting claims 4-8, 10-13, and 17-21 under 35 U.S.C. § 103, the examiner relies
on Evans and Stryer, taken in further combination with the individual references noted. In
view of our determination regarding the rejection of claims 1-3, 9, 15, 16, and 21 over Evans
and Stryer, it is necessary to determine only whether the additional references, relied upon
by the examiner, provide that which is missing from Evans and Stryer. They do not. The
references do not provide the reason, suggestion, or motivation determined to be missing
and necessary to support the combination of the disclosures of Evans and Stryer in a
manner which would have lead one of ordinary skill in this art to use the recombinant virus
infected cells of Stryer in the bioassay disclosed by Evans. Therefore, with regard to claims
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