Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 34


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  her burden of establishing a prima facie case of obviousness in obtaining the                               
                  necessary nucleic acid to use in obtaining these membrane preparations.                                     
                         The initial burden of presenting a prima facie case of obviousness rests on                          
                  the examiner.  On these facts, 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 obtaining EAA5 cDNAs.  Without first successfully                                 
                  obtaining the cDNAs the examiner’s basis for rejecting the claimed method of                                
                  assaying can not be supported.                                                                              
                         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).                                                                                      
                         Accordingly we reverse the examiner’s rejection of claims 35-38 under    35                          
                  U.S.C. § 103 as being unpatentable over Bettler ‘92 in view of Puckett.                                     
                         Having determined that the examiner has not established a prima facie case                           
                  of obviousness, we find it unnecessary to discuss the Kamboj Declaration executed                           
                  May 3, 1994, relied on by appellants to rebut any such prima facie case.                                    
                  Werner in view of Heinemann and Puckett:                                                                    
                  Claim 35:                                                                                                   
                         The examiner’s basis for this rejection is similar to that made for Bettler ’92                      
                  in view of Puckett, supra.  Specifically, that it would have been prima facie obvious                       
                  to a person of ordinary skill in the art to obtain the relevant nucleic acid and then                       
                  express that nucleic acid in a cell, or on a cell membrane in such a manner that an                         
                  assay can be performed.                                                                                     

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