Appeal No. 1999-1425
Application No. 08/393,321
has provided those facts or evidence which would reasonably support a conclusion that the
claimed subject matter would have been prima facie obvious within the meaning of 35
U.S.C. § 103. 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 under 35 U.S.C. § 103 is
reversed.
The examiner’s rejection of claims 10 - 26 under 35 U.S.C. § 103 as obvious over
the combination of Sambrook, Johnson and Agerkvist is similarly flawed. While relying on
Sambrook as discussed supra, the examiner relies on Johnson as teaching the use of a
bead mill to disrupt cells, including the use of beads of a size which would appear to
correspond, at least to some degree, to that required by the claims. (Answer, page 6).
The examiner acknowledges that Johnson “does not teach all of the limitations claimed by
appellant.” (Id.). However, the examiner urges that “[t]he Johnson procedure could be
modified by routine experimentation to produce a method using lower rotation speeds and
larger beads.” (Id.). While indicating that the use of glass bead disruption “does not
fragment DNA to the extent resulting from sonication or passage through a French
pressure cell . . . . ” (Johnson, page 5, paragraph c), Johnson does not suggest that the
technique could be used to isolate “intact DNA plasmids” as presently claimed. Similarly,
Agerkvist, in describing Figure 3 states that “the DNA polymer is shear sensitive and will
be irreversibly degraded to smaller fragments during the experiment.” The examiner offers
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