Appeal No. 1999-2231
Application No. 08/278,774
construction would facilitate purification (Answer, page 4), and allow the use of
alternative means, as taught by Carter, for cleaving the propeptide from the
collagen chain, than those “enzymes though to be expressed only in cells that
naturally produce collagen” (Answer, page 5).
In contrast, we can not agree with the examiner’s position that, in view of
the combination of prior art relied upon a person of ordinary skill in the art would
recognize that “the second propeptide could be located at either end of the
collagen, or the two propeptides could be located at one end of the collagen”
(Answer, page 5). While a person of ordinary skill in the art may possess the
requisite knowledge and ability to make the modifications suggested by the
examiner, the modifications are 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 reason, and the examiner failed to
identify the reason in the art, to suggest that a person of ordinary skill in the art
would modify the references to include a second propeptide and a second non-
natural site-specific proteolytic agent recognition site.
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 these circumstances, we are constrained to reach the
conclusion that the examiner has failed to provide the evidence necessary to
support a prima facie case of obviousness. Accordingly, we reverse the rejection
of claim 6 under 35 U.S.C. § 103 as being unpatentable over Chu, Prockop and
Olsen in view of Carter. As discussed supra claim 7 stands together with claim 6.
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