Appeal No. 1999-1676
Application No. 08/452,228
given the lack of evidence relating to the claimed rhesus nucleic acid a person of
ordinary skill in the art would not have had a reasonable expectation of success in
obtaining the claimed nucleic acid. In the absence of a reasonable expectation of
success of isolating and identifying the specific DNA sequence of the claim, one is
left with only an “obvious to try” situation which is not the standard of obviousness
under 35 U.S.C. § 103. See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680.
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). 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).
Accordingly, we reverse the rejection of claims 1 and 2 under 35 U.S.C.
§ 103, as being unpatentable over Zhang.
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