Appeal No. 1996-0449
Application 08/009,423
The examiner cites Miller, Garcia, Robinson, Bonekamp and Ulrich as evidencing
facts directed to the various aspects of the claimed invention and then concludes that
(Answer, page 6):
[i]t would have been obvious to modify the disclosure of Neill et al by
transforming E. coli as a host cell with a vector containing the tRNA gene
which recognizes the AGG or AGA codons (i.e. dnaY), since Miller et al
teach the transformation of E. coli with genes encoding tRNA, Robinson et al
and Bonekamp et al teach that the AGG codon limits the translation in E. coli
of proteins whose corresponding mRNA contain it, and since Garcia
teaches the gene encoding the tRNA which inserts arginine at said AGG
codon (i.e. dnaY).
What is missing from the examiner's explanation of this rejection is any reason or
suggestion to be found in the prior art which would reasonably suggest bringing the
unrelated factual evidence together in a manner to arrive at the claimed invention. It is the
initial burden of the patent examiner to establish that claims presented in an application for
patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). In order to meet the burden of establishing a
prima facie case of unpatentability of the claimed subject matter the examiner must
establish that there is a reason, based on the prior art, or knowledge generally available in
the art, as to why it would have been obvious to one of ordinary skill in the art to arrive at
the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985). On the record before us, the
examiner has failed to provide any evidence which would have reasonably led one of
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