Appeal No. 2000-1779 Application No. 08/473,204 addition to providing the methodology of isolating, identifying and sequencing a DNA which would encode a known polypeptide, the prior art indicated that the polypeptide for which the DNA was sought had been purified and the amino acid sequence was known. On the record before us, and as argued by appellants, the proteins of the claimed invention were not known to be present in humans, there was only a suggestion by Puckett (Page 7559, column 1) that a similar diversity in rats “is likely to be found in human KA receptors.” Further, the examiner has provided no evidence that would provide a reasonable suggestion, motivation, or direction that would have led one of ordinary skill in this art to use the techniques of Puckett to isolate and identify the DNA sequences that encode such unknown proteins. In re Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991). The initial burden of presenting a prima facie case of obviousness rests on the examiner. On these facts, we are constrained to reach the conclusion that the examiner has failed to provide the evidence necessary to support a prima facie case of obviousness as to the EAA4 receptors used in the claimed assay method. Where 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 examiner’s rejection of claims 26, 27, 40, 45 and 47-52 under 35 U.S.C. § 103 as being unpatentable over Egebjerg in view of Puckett or Sun. Claim 28: 27Page: Previous 20 21 22 23 24 25 26 27 28 29 30 31 32 33 34 NextLast modified: November 3, 2007