Appeal No. 1997-2517
Application No. 08/155,102
life.”); Bielinska, page 1446 (“[T]he C-terminal region of hCGa plays a critical role
in receptor binding of the hormone.”).
The examiner argues that a person of ordinary skill in the art would
nonetheless have expected the a subunit mutants to be useful as part of a
hormone antagonist, because they would compete with the native a subunits for
binding to the native ß subunits. This rationale, although creative, is not
supported by the cited references. Motivation to combine the prior art must be
supported by “actual evidence. That is, the showing must be clear and
particular.” Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617. The prior art of
record does not provide the required evidence.
The references relied on by the examiner provide no suggestion that those
skilled in the art would have considered a gonadotropin a subunit mutated at
positions 88-92 to be useful as an antagonist in the manner posited by the
examiner. Nor do the cited references suggest any other use for the a subunit
mutants encoded by the instantly claimed DNA. Since the references do not
suggest that the claimed DNA would encode a useful product, they do not
provide the required “reason, suggestion, or motivation” to combine their
separate teachings in the manner proposed by the examiner.
“In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based upon
the prior art.” In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed.
Cir. 1992). Where, as here, the prior art does not support a prima facie case, the
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