Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 78


                  Appeal No.  1999-2200                                                                                          
                  Application No.  08/896,063                                                                                    

                  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.                                               

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