Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 19


                  Appeal No.  1999-1393                                                                                         
                  Application No.  08/242,344                                                                                   
                  encode such unknown proteins.  In re Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438,                                
                  1443-1444 (Fed. Cir. 1991).  In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1681                               
                  (what was “obvious to try” was to explore a new technology or general approach that                           
                  seemed to be a promising field of experimentation, where the prior art gave only                              
                  general guidance as to the particular form of the claimed invention or how to                                 
                  achieve it).                                                                                                  
                          The initial burden of presenting a prima facie case of obviousness rests on                           
                  the examiner.  On these facts, it is our opinion that the examiner has failed to                              
                  provide the evidence necessary to support a prima facie case of obviousness as to                             
                  the EAA3 receptors used in the claimed assay method.                                                          
                          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 Kamboj Declaration executed                             
                  September 29, 1995, relied on by appellants to rebut any such prima facie case.                               
                          Accordingly we reverse the examiner’s rejection of claims 23, 25, 26, 37, 39,                         
                  and 43-45 under 35 U.S.C. § 103(a) as being unpatentable over Heinemann in view                               
                  of Bettler ‘90, Sommer ‘92, Puckett and Birnbaumer.                                                           
                  Summary:                                                                                                      
                          We reverse the examiner’s rejection of claims 23, 25, 26, 37, 39, and    43-                          
                  45 under 35 U.S.C. § 103(a) as being unpatentable over Heinemann in view of                                   
                  Bettler ‘90, Sommer ‘92, Puckett and Birnbaumer.                                                              

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