Appeal No. 2003-0528 Page 8
Application No. 09/314,841
Once again the examiner has failed to provide any factual evidence to support
her position that modifying Butler’s reagent in to include both glycine and a
mono-, or oligo-saccharide, or a sugar alcohol would retain Butler’s enhanced
shelf life. In this regard, we remind the examiner that “it is impermissible within
the framework of section 103 to pick and choose from any one reference only so
much of it as will support a given position to the exclusion of other parts
necessary to the full appreciation of what such reference fairly suggests to one
skilled in the art.” In re Wesslau, 353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA
1965); see also In re Mercer, 515 F.2d 1161, 1165-66, 185 USPQ 774, 778
(CCPA 1975).
We recognize the examiner’s statement (Answer, page 16), “[a]ppellant
[sic] does not provide any reasons why one skilled in the art would NOT have
expected success in using beta alanine or GABA as stabilizers in a tissue factor
reagent; nor has appellant provided any evidence that GABA or beta alanine
unexpectedly provide BETTER stability than the glycine of B[rucato] or B[utler].”
In our opinion, the examiner has improperly attempted to shift her burden of
establishing a prima facie case of obviousness to appellant. “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
going forward with evidence or argument shift to the applicant.” In re Rijckaert, 9
F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). Furthermore, we
note that in order to establish a prima facie case of obviousness, there must be
both some suggestion or motivation to modify the references or combine
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