Appeal No. 2002-0449 Page 4
Application No. 09/037,409
Appellants do not dispute that the glycoproteins of Mandal and the instant
specification are the same. They argue, however, that the examiner has not met
his burden of “show[ing] that the [Harris] reference provides guidance in selecting
a particular purification scheme (from among the many combinations and
permutations disclosed) to isolate a particular protein from a particular medium
sufficient to have provided one of ordinary skill in the art with a reasonable
expectation of success without undue experimentation.” Appeal Brief, pages 7-8.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). “[A] proper analysis under § 103 requires, inter alia, consideration of two
factors: (1) whether the prior art would have suggested to those of ordinary skill
in the art that they should make the claimed composition or device, or carry out
the claimed process; and (2) whether the prior art would also have revealed that
in so making or carrying out, those of ordinary skill would have had a reasonable
expectation of success. Both the suggestion and the reasonable expectation of
success must be founded in the prior art, not in the applicant’s disclosure.” In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1443 (Fed. Cir. 1991) (citation
omitted).
In this case, we agree with Appellants that the references relied on by the
examiner do not support a prima facie case under § 103. Rather, the references
appear to support only an “obvious to try” rationale. “An ‘obvious-to-try’ situation
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