Appeal No. 1996-1204
Application No. 08/090,369
been obvious to use the methodology of Hopkins and Gerard to isolate, identify and
characterize a protein not demonstrated to be known at the time of the invention. The
examiner's reliance (Answer, page 14) on the concluding statements of both Hopkins and
Gerard concerning further studies relating to the neurokinin receptor genes is too general
in nature reasonably to point those of ordinary skill in this art toward the isolation and
characterization of the claimed human NK-3 receptor and DNA encoding the receptor,
when read in context of the teaching of the articles as a whole. On these facts, the
examiner has failed to establish a prima facie case of unpatentability as to the claimed
subject matter.
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 claim 25-28 and 30 under 35 U.S.C. § 103 is
reversed.
In separately rejecting claim 29 under 35 U.S.C. § 103 the examiner has relied on
Fraser in addition to Shigemoto, Hopkins and Gerard. However, Fraser does not provide
that which we have determined to be missing in the previously discussed rejection.
Therefore, this rejection is also reversed.
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