Appeal No. 2005-1171
Application No. 09/469,485
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., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, the examiner states that he is relying on the Valenzuela publication in
Nature, vol. 280, pages 815-819 (1979)(hereinafter Valenzuela I). Answer, p. 4. The
examiner’s arguments, however, reference different page numbers; viz., pages 348-
349. Going back over the prosecution, we find that this is not the only time that the
examiner has made this argument. Attention is directed to the final office action, mailed
November 5, 2003, and the non-final rejection mailed May 5, 2003, where the examiner
references the same Nature publication [vol. 280] for the same reason. Given the
aforementioned discrepancy in the page numbers, it does not appear that the examiner
is relying on [or has ever relied upon] the publication listed on page 4 of the Answer.
In any event, turning to the Nature publication before us, we find that it is directed
to the cloning of the HBV (hepatitis B virus) genome and the characterization of the
surface antigen (HBsAg). That is, Valenzuela I discloses the nucleotide sequence of
the HBsAg gene and the amino acid sequence deduced therefrom. With respect to the
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