Appeal No. 1998-0053
Application 08/444,628
It is well settled that the initial burden of establishing unpatentability rests on the
examiner, In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ 1626, 1629, (Fed. Cir. 1996) (citation omitted):
[B]efore a conclusion of obviousness may be made based on a combination
of references, there must have been a reason, suggestion, or motivation to
lead an inventor to combine those references.
In our judgment, the only reason or suggestion to modify the references to arrive at the
claimed truncation mutant comes from appellants’ specification. Accordingly, we find that
the examiner’s initial burden of establishing a prima facie case of obviousness has not
been met. The rejection of claims 1 and 4 under 35 U.S.C. § 103 is reversed.6
Claim 2, directed to the truncation mutant of claim 1 containing two additional
amino acids at the amino-terminus, stands rejected as unpatentable over Goldberg,
O’Connell, Murphy, Liotta, Hirel and Thomas. The underlying rationale of the rejection
corresponds to that of claims 1 and 4, and suffers from the same infirmity. Again, we find
that the examiner’s initial burden of establishing a prima facie case of obviousness has not
been met, and the rejection of claim 4 under 35 U.S.C. § 103 is reversed.
REVERSED
6Having determined that a prima facie case of obviousness has not been
established, we find it unnecessary to comment on appellants’ arguments regarding the
unexpected properties of the claimed truncation mutants.
7
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