Appeal No. 2004-2078 Page 4
Application No. 09/754,509
disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc., 850
F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On
the record before us, we find no reasonable suggestion for combining the
teachings of the references relied upon by the examiner in a manner which 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.
Accordingly, we reverse the rejection of claims 1, 3, 4, 6-17 and 23-27
under 35 U.S.C. § 103(a) over the combination of Ghyczy and Woodle.
The combination of Ghyczy, Woodle and Kanno:
According to the examiner (Answer, page 5), “Kanno shows that it is
common practice in the art to encapsulate … [bacteriorhodopsin] in
liposomes….” While Kanno addresses an additional feature of the claimed
invention as set forth in claim 5, Kanno fails to make up for the deficiency in the
combination of Ghyczy and Woodle discussed above.
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