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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