Appeal No. 1997-2510
Application No. 07/868,539
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 rejection of
claims 1, 3 and 6-8 under 35 U.S.C. § 103 as obvious over Bielinska, in view of
Sakata, Uhlmann and Inouye.
The rejection of claims 5 and 11 over Vickers, in view of Sakata, Metzler,
Uhlmann and Inouye; or Bielinska, in view of Sakata, Uhlmann and Inouye,
further in view of Kaji and Everett.
According to the examiner (Answer, page 9) Kaji discloses using DNA
coding for herpes virus Vmw 175 protein where Everett et al. disclose sequences
to which Vmw 175 binds….” The examiner finds (id.) “[t]he DNA disclosed in the
Everett et al. reference has a known antiparallel strand deducible from the
disclosed sequence.” However, while the examiner directs our attention to page
4901 and to Table 1 of Everett, the examiner fails to identify which sequence he
is relying on to teach the “known antiparallel strand[s]”. The best we can surmise
is the examiner is referring to the schematic representation (see Everett, Figure
1) of the structure of the HSV-1 genome that
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