Appeal No. 1997-1307
Application No. 08/014,012
the references relied upon by the examiner in a manner which would have
reasonably led one of ordinary skill in this art to arrive at the claimed invention. The
suggestion that CDP-choline is therapeutically useful and that a C. ammoniagenes
overproduces UMP is, in our opinion, insufficient to suggest to a person of ordinary
skill in the art to obtain a microorganism which carries a recombinant DNA
comprising a DNA fragment containing genes encoding pyrG, CCT with or without
CKI, and then culture this microorganism in the presence of a second
microorganism which produces UTP.
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 meet his burden of establishing a prima facie case of
obviousness. Instead, in this case the examiner has merely demonstrated the
existence of all of the components of the claimed subject matter. What is missing is
the requisite suggestion to combine the individual components to achieve the
claimed invention.
In addition, we note that the examiner relies upon Neuhard (See e.g.,
Answer, page 6). However, Neuhard is not part of the examiner’s statement of the
rejection. We remind the examiner that “[w]here a reference is relied on to support
a rejection, whether or not in a ‘minor capacity,’ there would appear to be no excuse
for not positively including the reference in the statement of the rejection.” In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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