Appeal No. 1997-2140
Application 08/357,820
given for the further deletion of the internal fibronectin-like domains, however, is an entirely
different matter. To the extent that manipulation of the 72 kDa gelatinase is relevant to the
92 kDa gelatinase, Murphy shows that deletion of the fibronectin-like domains, by
eliminating the ability of the mutant to bind collagen, markedly impairs the ability of the
truncated mutant to degrade gelatin. Thus, the combination of deletions proposed by the
examiner would seem, based on the references cited, to operate at cross-purposes.
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 only reason or suggestion to modify the references to arrive at the
claimed truncation mutant comes from appellants’ specification. Accordingly, we find that
the examiner’s initial burden of establishing a prima facie case of obviousness has not
been met. The rejection of claim 3 under 35 U.S.C. § 103 is reversed.5
Claim 4, directed to the truncation mutant of claim 3 containing two additional
amino acids at the amino-terminus, stands rejected as unpatentable over Goldberg,
5Having determined that a prima facie case of obviousness has not been
established, we find it unnecessary to comment on appellants’ arguments regarding the
unexpected properties of the claimed truncation mutants.
6
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