Appeal No. 2002-0456 Page 5
Application No. 09/155,995
results of cross-linking Sepharose ® with allylbromide. According to the examiner’s
argument, then, the Sepharose ® used in the example is not a gel. As this would be
inconsistent with Lindgren’s generic description of the prior art process (not to mention
Examples 2 through 6), and as the examiner has provided no factual basis for his
assertion, we are not persuaded by this argument. Similarly, the examiner has not
established a factual basis for his assertion that “the product produced by the prior art
method is . . . patentably indistinguishable from the instant claimed product” (Answer,
page 4).
Finally, we are at a loss as to how the examiner can interpret “[a]ppellant’s
admission . . . that the contacting of agarose or other polysacharides with crosslinking
agents is conventional in the art” as “an admission that . . . the appropriate conditions
for their use are not a patentably distinguishing feature.” Answer, page 6.
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). Thus, the examiner is charged with adequately addressing every limitation of
the claimed invention. This the examiner has not done. In our judgment, Lindgren’s
disclosure, with or without “appellant’s admission,” is insufficient to support a
conclusion of obviousness of claims containing the limitations discussed above and the
examiner has failed to provide an adequate factual basis to establish a prima facie case
of obviousness within the meaning of 35 U.S.C. § 103.
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