Appeal No. 1997-2510
Application No. 07/868,539
would have reasonably led one of ordinary skill in this art to arrive at the claimed
invention.
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). Therefore, on these facts, it is our opinion that the examiner
failed to provide the evidence necessary to support a prima facie case of
obviousness. If 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). Accordingly, we reverse the examiner’s rejection of
claims 1, 3 and 6-8 under 35 U.S.C. § 103 as obvious over Vickers, in view of
Sakata, Metzler, Uhlmann and Inouye.
The rejection of claims 1, 3 and 6-8 over Bielinska, in view of Sakata, Uhlmann
and Inouye:
According to the examiner (Answer, page 8) Bielinska:
disclose double stranded oligonucleotide DNA that resulted
in >90% reduction in gene expression (Epstein-Barr virus)
and over 80% inhibition for HIV-CAT…. Insofar as
oligonucleotides are disclosed, it would have, nevertheless,
been obvious to one of ordinary skill in the art that where
Sakata et al. disclosed double stranded polynucleotides with
greater thermal stability when they are connected via a
hairpin loop … to have connected the double stranded
oligonucleotides disclosed in the Bielinska et al. reference
with loop structures disclosed in the Sakata et al. reference
for increased stability when used in vivo.”
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