Appeal No. 1997-3329
Application No. 08/396,988
The examiner has offered no other evidence in support of the proposition that the human
macrophage elastase was known in the prior art at the time of applicant's invention.
Absent evidence establishing that the protein was known, it would not have been obvious
to use the methodology of Shapiro, Flier or Docherty in combination with the cDNA library
of Gray to isolate and characterize an unknown protein.
When we weigh all of the evidence, it is not clear what the situation was at the time
of the invention. However, the initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). On these circumstances, 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 the claimed human macrophage metalloelastase
having the amino acid sequence of SEQ ID NO:2.
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). Therefore the rejection of claim 3 under 35 U.S.C. § 103 is reversed.
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