Appeal No. 1999-0123
Application No. 08/406,239
Nguyen, 492 F.2d 856, 859-59, 181 USPQ 46, 48 (CCPA
1974)(emphasis omitted). Accord, In re Geerdes, 491 F.2d 1260 ,
1265, 180 USPQ 789, 793 (CCPA 1974); In re Anderson, 471 F.2d
1237, 1242, 176 USPQ 331, 334-35 (CCPA 1971). Of course, if the
number of inoperative combinations becomes significant, and in
effect forces one of ordinary skill in the art to experiment unduly in
order to practice the claimed invention, the claims might indeed be
invalid. See, e.g., In re Cook, 439 F.2d 730, 735, 169 USPQ 298,
302 (CCPA 1971).
Furthermore, appellants argue (Brief, page 16) that “[t]he [e]xaminer has
provided no examples of hydrolases or inhibitors that ‘would not likely work in the
claimed invention … [e]ven if the claims did encompass inoperative species … this
is not legally sufficient grounds for rejecting them.” We agree.
On these facts, the examiner failed to meet his burden of establishing that the
claimed invention is not enabled throughout its entire scope. Accordingly, we
reverse the examiner’s rejections under 35 U.S.C. § 112, first paragraph.
THE REJECTIONS UNDER 35 U.S.C. § 103:
Appellants argue the rejections under 35 U.S.C. § 103 together, therefore,
we will treat them together in this decision.
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). Furthermore, 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 and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
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