Appeal No. 2005-0394 Page 5
Application No. 08/940,692
While one skilled in the art might hope to manipulate PTS-/Glu+
cells to have a higher growth rate there is no expectation, as taught
in Saier, that one skilled in the art could reasonably expect to obtain
a PTS-/Glu+ cell with a growth rate higher than 0.35 h-1 and at least
0.4 h-1 as presently claimed.
We are not persuaded by the examiner’s speculation (Answer, page 10), that
given the manner in which Saier reported the growth rate date, the actual growth
rate reported in Saier could be anywhere between 0.28/hr up to 0.46/hr. In this
regard, we remind the examiner that “[t]he Patent Office has the initial duty of
supplying the factual basis for its rejection. It may not, because it may doubt that
the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Further, as discussed above, the examiner has failed to identify,
and we cannot locate, a portion of the prior art relied upon that teaches screening
cells for a fast growth rate on glucose, or more specifically to screen cells to
obtain a growth rate of at least 0.4 h-1 as required by appellants’ claimed
invention.
Based on the foregoing, it is our opinion that the examiner failed to meet
her burden2 of establishing a prima facie case of obviousness. Accordingly, we
reverse the rejection of claims 23, 27, 38, 46 and 49 under 35 U.S.C. § 103 as
being unpatentable over Saier and Ingrahm.
The combination of Frost, Holms, Ingrahm and Saier:
2 In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992).
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