Appeal No. 1997-3221
Application No. 08/249,241
executed July 21, 1997, and the Declarations60 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 examiner’s rejection of claims 1, 4, 7, 10, 11, 13,
15, 16, 18, 19, 26, and 42-49 under 35 U.S.C. § 103 as being unpatentable over
Heinemann in view of Puckett, Sun, Schofield, and Grenningloh.
The rejection of claims 23, 24 and 27:
Claim 23:
Cutting fails to make up the deficiencies identified supra for the combination
of Heinemann in view of Puckett, Sun, Schofield, and Grenningloh.
Therefore the examiner has failed to meet his burden of establishing a prima
facie case of obviousness for obtaining the claimed membrane preparation.
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).
60 However, we compare the examiner’s statement (Answer, page 30) 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, 1999-2118, 1999-2200, 2000-1778, 2000-1779, and 2000-1780.
78
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