Appeal No. 1996-2431
Application 08/008,186
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congeners carrying other acyl groups.” Abstract. Neither teaching suggests anything,
negative or positive, about the effects of conjugating D-Mel to position six of the analogs.
It is well settled that the initial burden of establishing unpatentability rests on the
examiner, In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ 1626, 1629, (Fed. Cir. 1996) (citation omitted):
[B]efore a conclusion of obviousness may be made based on a combination
of references, there must have been a reason, suggestion, or motivation to
lead an inventor to combine those references.
In our judgment, the examiner’s proposed reasons for combining Channabasavaiah and
Bajusz are not sufficient to support a conclusion of obviousness. This insufficiency is not
remedied by any of the remaining references relied on by the examiner.
3Contrary to appellants’ arguments in the Brief (e.g., page 12), this portion of
Bajusz appears to refer to the effects of conjugating Chl to the N-terminal amino acids of
LHRH agonist and antagonist analogs, not to the effects of conjugating Chl to position six
of LHRH analogs.
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