Appeal No. 2000-1779 Application No. 08/473,204 her burden of establishing a prima facie case of obviousness in obtaining the necessary nucleic acid to use in obtaining these membrane preparations. 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 obtaining EAA5 cDNAs. Without first successfully obtaining the cDNAs the examiner’s basis for rejecting the claimed method of assaying can not be supported. 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 35-38 under 35 U.S.C. § 103 as being unpatentable over Bettler ‘92 in view of Puckett. Having determined that the examiner has not established a prima facie case of obviousness, we find it unnecessary to discuss the Kamboj Declaration executed May 3, 1994, relied on by appellants to rebut any such prima facie case. Werner in view of Heinemann and Puckett: Claim 35: The examiner’s basis for this rejection is similar to that made for Bettler ’92 in view of Puckett, supra. Specifically, that it would have been prima facie obvious to a person of ordinary skill in the art to obtain the relevant nucleic acid and then express that nucleic acid in a cell, or on a cell membrane in such a manner that an assay can be performed. 34Page: Previous 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 NextLast modified: November 3, 2007