Appeal No. 1996-1085
Application No. 08/097,621
combine reference teachings, and (2) a reasonable expectation of success. In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
In our judgment, based on the evidence of record, the only reason or
suggestion to modify the references to arrive at the present invention with a
reasonable expectation of success comes from appellants’ specification.
Therefore, we find that the examiner failed to meet his burden of establishing
a prima facie case of obviousness. 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 rejection of claims 32-52 under 35 U.S.C.
§ 103 as being unpatentable over Bowden and Gilbert.
The combination of Bowden and Gilbert in view of Pigiet:
The examiner applies Pigiet (Answer, page 6) to teach that E. coli
thioredoxin shufflease is involved in protein folding. However, Pigiet fails to make
up the deficiencies of Bowden and Gilbert, supra.
Therefore, we find that the examiner failed to meet his burden of establishing
a prima facie case of obviousness. Where the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned. Fine, 837 F.2d at 1074,
5 USPQ2d at 1598.
Accordingly, we reverse the examiner’s rejection of claims 53-59 under 35
U.S.C. § 103 as being unpatentable over Bowden and Gilbert as applied to claims
32-52 and further in view of Pigiet.
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