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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