Appeal No. 95-3268
Application 07/521,695
(Fed. Cir. 1992). The examiner's rejection of these claims is fatally defective since they do
not properly account for and establish the obviousness of the subject matter as a whole.
Where, as here, 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). We conclude that, with regard to claims 5-22 and 27-30, the examiner
has failed to establish a prima facie case of obviousness. We, therefore, reverse the
rejection of claims 5-22 and 27-30 under 35 U.S.C. § 103.
Claims 26, 31 and 32:
Claims 26, 31, and 32 stand rejected under 35 U.S.C. § 103 as being obvious over
Aston (I) in view of Guyton and as obvious over Aston (I) in view of Guyton and Aston (II).
We elect to treat these two grounds of rejection together, since the rejection over Aston (I)
and Guyton is subsumed by the rejection over Aston (I), Guyton, and Aston (II).
As noted above, it is the initial burden of the patent examiner to establish that
claims presented in an application for patent are unpatentable. In re Oetiker, supra. On
the record before us, we agree that Aston (I) generically discloses the potentiating of the
hormonal activity of growth hormones by administering, to non-human vertebrate, a growth
hormone with at least one antibody which binds to that hormone in order to obtain an
increase in cumulative weight gain in the vertebrate. In addition, Aston (II), which
discloses porcine somatotropin as a growth hormone, would have suggested to those of
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