Appeal No. 2004-2139
Application No. 09/181,601
the appellants, the examiner used hindsight in combining these two references.
With respect to the teachings of Farber, the appellants argue that the publication
is non-analogous art. Id., p. 16. According to the appellants, Faber “is from the art area
of information theory.” Id. Thus, the appellants urge that one of ordinary skill in the art
of protein biochemistry would not use art disclosing the prediction of exon boundaries to
identify protein domains. Id.
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available [in the art] would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 745 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). This the
examiner has done.
First, we agree with the examiner that the claimed method is directed to a series
of steps routinely performed in biotechnology. Answer, p. 10. DNA sequences are
routinely isolated and analyzed to identify those regions therein which encode proteins.
See, Farber and the specification, pp. 10-11. Once a protein coding region is identified,
it is then analyzed to determine its 3-D conformation and biochemical function.
Wallace, the abstract.
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