Appeal No. 1999-1384
Application No. 08/583,912
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the protocols taught by Ligler and Kidwell, the
modification is not obvious unless the prior art suggested the desirability of the
modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir.
1984). Here we see no such reason to modify the references as applied. On
this record, the examiner has failed to provide the evidence necessary to support
a prima facie case of obviousness. 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).
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