Appeal No. 1999-1271
Application No. 08/467,883
“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). Prima facie obviousness cannot be shown unless the prior art
provides “a reason, suggestion, or motivation to lead an inventor to combine [the]
references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
The prima facie case must take into account all of the limitations recited in
the claim. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA
1976) (“[W]e must give effect to all claim limitations.” (emphasis in original)).
Therefore, where the claims require that certain steps be performed in a certain
order, the prior art must suggest the recited steps in the recited order.
In this case, the examiner has not met her burden of showing that the
cited references would have suggested the claimed process to those skilled in
the art. We can agree, at least for argument’s sake, that those skilled in the art
would have been motivated to purify multiple Haemophilus membrane proteins
from a single cell preparation, because doing so would reduce the amount of
starting material required. We can also agree that purified P1, P2, and P6
membrane proteins would have been recognized as desirable, since the prior art
teaches that these proteins each raise protective antibodies (see Kuo, col. 2,
lines 57-64; Loeb, abstract; Munson, abstract).
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