Appeal No. 2000-2269 Page 7
Application No. 08/862,337
have found it obvious to modify the method taught by Gold in such a way as to
meet the limitations of claim 1, nor has he established that Gold would have
rendered obvious the product of claim 26.
The examiner’s statement that “[i]t would have been prima facie obvious to
one having ordinary skill in the art at the time the invention was made to utilize
the method of Gold for the identification of targets of any molecule and any
epitope,” Examiner’s Answer, page 5, is not sufficient. Claim 1 is not directed to
identifying the “targets of any molecule and any epitope;” it is limited to identifying
nucleic acids that bind to the antigen-recognition site of an antigen-binding
protein. Likewise, claim 26 is limited to a nucleic acid that binds to the antigen-
recognition site of an antigen-binding protein. The examiner has pointed to
nothing in the reference that would have led those skilled in the art to the
specific, claimed method or product. We conclude that the examiner has met his
burden of showing that the prior art would have motivated those skilled in the art
to modify Gold in such a way as to meet the limitations of the appealed claims.
Since we conclude that the examiner has not made out a prima facie
case, we need not address Appellants’ rebuttal evidence, presented in the Keene
and Kenan declaration. We note, however, that the examiner seemed to be
trying mainly to minimize the declaration’s evidentiary weight, rather than to
evaluate it objectively. If so, the examiner erred. “When prima facie obviousness
is established and evidence is submitted in rebuttal, the decision-maker must
start over. . . . The appealed claims must be reconsidered in the light of all the
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