Appeal No. 1995-2464
Application No. 08/068,392
The examiner has offered no other evidence in support of the proposition that the human
macrophage elastase was known in the prior art at the time of applicant's invention.
Absent evidence establishing that the specific protein was known, it would not have been
obvious to use either the methodology of Shapiro or Flier to isolate and characterize the
cDNA which encodes an unknown protein.
When we weigh all of the evidence, it is not clear what the situation was at the time
of the invention. However, the initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). On these circumstances, 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 claimed cDNA which encodes for the human
macrophage metalloelastase.
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). Therefore, the rejection of claims 1 and 2 under 35 U.S.C. § 103 is reversed.
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