Appeal No. 2006-0189 Page 6
Application No. 09/825,242
not expressly or inherently contain designations of zinc finger proteins,
subdesignations of each of three fingers for each zinc finger protein, or the
target sequences of the zinc finger proteins, as claimed. Corbi does
nothing to compensate for the[se] deficiencies.
Id. , page 7
We agree with Appellants that the cited references do not support a prima facie
case of obviousness.
“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 coming forward with evidence or argument shift to the applicant.”
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
The test of obviousness is “whether the teachings of the prior art, taken as a
whole, would have made obvious the claimed invention.” In re Gorman, 933 F.2d 982,
986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). The claimed invention is the invention
defined by all the limitations of the claims. See In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995) (A proper § 103 analysis requires “a searching
comparison of the claimed invention – including all its limitations – with the teaching of
the prior art.”).
Here, the claimed method includes, among other things, “providing a database”
comprising certain information. Thus, to make out a prima facie case of obviousness,
the examiner must show that the prior art would have suggested providing a database
that includes the information recited in the claims.
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