Appeal No. 1997-3221
Application No. 08/249,241
encode such unknown proteins. In re Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438,
1443-1444 (Fed. Cir. 1991). In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1681
(what was “obvious to try” was to explore a new technology or general approach that
seemed to be a promising field of experimentation, where the prior art gave only
general guidance as to the particular form of the claimed invention or how to
achieve it).
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. On these facts, it is our opinion that the examiner has failed to
provide the evidence necessary to support a prima facie case of obviousness as to
the EAA3 receptors used in the claimed assay method.
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).
Having determined that the examiner has not established a prima facie case
of obviousness, we find it unnecessary to discuss the Kamboj Declaration executed
September 29, 1995, relied on by appellants to rebut any such prima facie case.
Accordingly we reverse the examiner’s rejection of claims 23, 25, 26, 37, 39,
and 43-45 under 35 U.S.C. § 103(a) as being unpatentable over Heinemann in view
of Bettler ‘90, Sommer ‘92, Puckett and Birnbaumer.
Summary:
We reverse the examiner’s rejection of claims 23, 25, 26, 37, 39, and 43-
45 under 35 U.S.C. § 103(a) as being unpatentable over Heinemann in view of
Bettler ‘90, Sommer ‘92, Puckett and Birnbaumer.
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