Appeal No. 1997-2639
Application No. 08/237,129
35 U.S.C. § 103
Claims 14-24 stand rejected under 35 U.S.C. § 103 as unpatentable for
obviousness over Lind and Fohlman taken with Siigur and Banks, in further view of
Lawman.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). It is well-established that before a conclusion of
obviousness may be made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those references. Pro-
Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1629, (Fed. Cir. 1996) . Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
in the prior art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). With this as background, we analyze the prior art applied by the
examiner in the rejection of the claims on appeal.
With respect to claims 14-20 and 23-24 the examiner finds that Lind and Fohlman
evidence that taipoxin is a potent presynaptic neurotoxin, but that they do not teach the
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