Appeal No. 2000-1294 Page 6
Application No. 08/850,924
motivation to carve appellants’ claimed compounds from the genus disclosed by
Holton.
On this record, the examiner fails to identify any factual evidence
suggesting that a person of ordinary skill in the art would modify Holton, to obtain
appellants’ claimed invention. Instead, as appellants point out (Reply Brief, page
2) C1-hydroxy compounds are the “most preferred alternative,” not the C1-deoxy
compounds claimed by appellants. We remind the examiner as set forth in In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations
omitted):
“Obviousness cannot be established by combining the teachings of
the prior art to produce the claimed invention, absent some
teaching or suggestion supporting the combination. Under section
103, teachings of references can be combined only if there is some
suggestion or incentive to do so.” Although couched in terms of
combining teachings found in the prior art, the same inquiry must
be carried out in the context of a purported obvious “modification”
of the prior art. The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability
of the modification.”
On the record before us, we find no suggestion to modify Holton as relied
upon by the examiner in a manner that would have reasonably led one of
ordinary skill in this art to arrive at the claimed invention. 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). In our
opinion the examiner 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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