Appeal No. 2000-1812
Application No. 08/432,483
prima facie obvious within the meaning of 35 U.S.C. § 103. 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
claims 1, 2, 6 - 8 and 27 under 35 U.S.C. § 103 is reversed.
The examiner's rejection of claims 1, 2, 5 - 8, 10 and 27 as unpatentable over the
combined teachings of Swenson, Valmori and Weiner, as well as the rejection of claims 1,
2, 5 - 8, 10 - 12, 14 -18, and 27 - 29 as unpatentable over the combined teaching of
Swenson, Valmori, Weiner, and Whitlock, rest principally on the evidentiary basis provided
by the combination of Swenson and Valmori. Having determined that Swenson and
Valmori, taken in combination, would not have provided sufficient basis for rejecting claims
1, 2, 6 - 8 and 27, consideration of the remaining two rejections requires only that we
determine whether either Weiner or Whitlock, alone or in combination, provide that which
is missing from the combination of Swenson and Valmori.
Weiner does not relate the CETP and is relied on by the examiner only to
demonstrate that "amino terminal cysteine added to sequence of peptides during
synthesis allows the coupling of the peptide to proteins . . . " (Answer, page 7). Whitlock,
like Swenson, describes studies relating to CETP where an antibody was used to
neutralize CETP activity. (Answer, page 8). As with Swenson, Whitlock provides no
teaching which would reasonably be read to lead those of ordinary skill in this art to modify
the CETP described therein by combining all or a portion of the CETP molecule with a T
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