Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 67


                  Appeal No.  1997-3221                                                                                         
                  Application No.  08/249,241                                                                                   
                          Therefore, in our opinion, base of this record, the examiner has failed to                            
                  meet his burden of establishing a prima facie case of obviousness.                                            
                          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 Zimmerman Declaration                                   
                  executed July 21, 1997, and the Declarations55 filed under 37 CFR  § 1 .131 of                                

                  Kamboj (executed August 7, 1997), Nutt (executed June 26, 1997) and Elliott                                   
                  (executed June 26, 1997) relied on by appellants to rebut any such prima facie                                
                  case.                                                                                                         
                          Accordingly, we reverse the rejection of claims 22, 32 and 34-40 under  35                            
                  U.S.C. § 103 as being unpatentable over Heinemann in view of Puckett and Sun.                                 














                                                                                                                                
                  55 However, we compare the examiner’s statement (Answer, page 20) that “[t]he                                 
                  transmission of confidential information does not show a reduction to practice of the                         
                  claimed isolated DNA,” with similar statements made in Appeal Nos.: 1999-1393,                                
                  1999-2200, 2000-1778, 2000-1779, and 2000-1780.                                                               

                                                              67                                                                



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