Appeal No. 1995-4370
Application 07/401,432
would lead one skilled in the art to substitute amide bridges of the particular structure
required by the claims for the disulfide binds of the prior art analogs.
It is well settled that the initial burden of establishing unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Moreover, 35 U.S.C. § 103 requires that obviousness be determined on the basis of the
claimed “subject matter as a whole.” Here, the examiner’s decisional process did not
begin with a fact-based analysis of what was being claimed. The inevitable result was that
the examiner’s conclusion of obviousness was based on less than the entire claimed
subject matter. Accordingly, we find that the examiner’s initial burden of establishing a
prima facie case of obviousness has not been met, and the
2
rejection of claims 29, 30, 86 and 87 under 35 U.S.C. § 103 is reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
) BOARD OF PATENT
Joan Ellis )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
2Having determined that a prima facie case of obviousness has not been
established, we do not find it necessary to comment on appellants’ arguments at pages 7
through 13 of the Brief regarding unexpected results attributable to the present invention.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007