Appeal No. 1997-3600
Application No. 08/300,447
Furthermore, we are not persuaded by the examiner’s argument (Answer,
page 10) that “[o]ne would have a high expectation of success in employing an
assay for the same substance derived from placenta as derived from plasma when
the same substance is known to be found in both plasma and placenta.” Instead,
we agree with appellants (Brief, page 9) that “the mere fact that placenta inhibitor
and PAI-1 have a common activity (the ability to inhibit t-PA) does not support the
[e]xaminer’s conclusion that the compounds are the same or behave in the same
manner.”
In addition, we emphasize that the examiner recognized (Answer, page 5)
that in contrast to the claimed invention, Wun teach a first order reaction. In this
regard we note appellants’ argument (Brief, page 15) that although Zeffren “teach
that second order reaction rates depend on the amount of the two reagents,
nowhere does Zeffren teach that the reaction between tPA and PAI-1 occurs
according to second order kinetics or that it can be used to determine the initial
amounts of these two reactants in a sample.” On these facts, we agree with
appellants (Brief, page 15) that “Zeffren does not provide the motivation to modify
the kinetic study disclosed in … [Wun] to achieve [a]ppellant’s [sic] claimed
invention.”
We re-emphasize, that the initial burden of presenting a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at
1444. In satisfying this initial burden, “[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt that the
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