Appeal No. 1996-3330
Application 07/861,458
15). Similarly, Webster and Libert do not supply the suggestion or direction which would
have reasonably led one or ordinary skill in this art to arrive at a method of isolating, in
other animals, unknown structural homologues of genes previously identified in a second
animal. While Webster and Libert describe methodology which one could use in isolating
structural homologues from a variety of sources, the examiner has provided no evidence
and pointed to no facts which would reasonably suggest the use of these methods in a
process of the type presently claimed.
At page 6, the examiner has offered an explanation as to why one of ordinary skill in
the art would have been motivated to isolate genes from a higher organism using probes
corresponding to related genes from a lower organism. These statements are long on
reasons why one of ordinary skill in the art would want to arrive at the claimed method and
short on the facts which would reasonably support a conclusion that it would have been
obvious to perform the method presently claimed. We do not question that one would have
been motivated to seek out genes in humans which are associated with disease
conditions. However, the determinative question is whether the prior art reasonably
suggests doing so in the manner called for by the claims.
It is the initial burden of the patent examiner to establish that claims presented in an
application for a patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). In order to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103, there must be some reason,
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