Appeal No. 1996-3797
Application No. 08/070,162
must be some reason, suggestion, or motivation found in the prior art whereby a person of
ordinary skill in the field of the invention would make the substitutions required. That
knowledge cannot come from the applicants' disclosure of the invention itself. Diversitech
Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir.
1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987);
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir.
1985). On the record before us, we find no reasonable suggestion for combining the
teachings of the references relied upon by the examiner with Suter in a manner which
would have reasonably led one of ordinary skill in this art to arrive at the claimed invention.
The initial burden of presenting a prima facie case of obviousness rests on the examiner.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). On these
circumstances, we are constrained to reach the conclusion that the examiner has failed to
provide the evidence necessary to support a prima facie case of obviousness as to the
claimed cell line. 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 rejections of claims 1-9 under 35 U.S.C. § 103 are
reversed.
Other issues
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