Appeal No. 1997-2510
Application No. 07/868,539
In response, the examiner argues (Answer, page 32) that “[o]ne of
ordinary skill in the art would have found it obvious to decrease Vmw 175
expression using DNA (sequence 5’ … NATCGTCCACACGGNN
NNCCGTGTGGACGATN … 3’) that interrupts the normal DNA binding to Vmw
175 protein by using DNA which is antiparallel to NATCGTCCACACGGNN bind
to the HSV-1 DNA to inhibit expression ….” The examiner however, fails to
idenfity any portion of Everett or Kaji, from which this statement of obviousness
is derived.
On the record before us, we find no reasonable suggestion for combining
the teachings of the references relied upon by the examiner in a manner that
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 rejection of claims 5 and 11 under 35 U.S.C.
§ 103 as obvious 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.
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