Appeal No. 1997-4275
Application No. 08/253,217
conclusion of obviousness of the claims directed to both the composition and method of
use is based, at least in part, on the proposition that Beutler establishes the use of
antibodies for TNF to prevent or treat patients with sepsis. Thus, this conclusion is not
adequately supported by the facts or evidence present in this record. In our opinion, the
combined teachings of Beutler with Ziegler are not sufficient to support a conclusion that
the presently claimed invention would have been prima facie obvious to one of ordinary
skill in this art at the time of the invention.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicants. Id. Where 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). Therefore, the
rejection of claims 1 - 9 and 13 - 16 under 35 U.S.C. § 103 is reversed.
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