Appeal No. 2006-1517 Page 11
Application No. 09/976,423
coding regions was performed by PCR amplification and restriction digestion,”
(Examiner’s Answer, page 11) and that “Tarkowski teaches analyses of TNFalpha and
TNFbeta gene polymorphism[s],” using PCR and restriction enzyme digestion. Id., page
13.
The examiner acknowledged that neither Rosen nor Tarkowski discloses
packaging the TNF-specific reagents in a kit, but relied on Ahern to suggest that
limitation: “Ahern teaches reagent kits offer scientists good return on investment.
Ahern teaches kits save time and money because the kits already come[ ] prepared.”
Examiner’s Answer, pages 11 and 13.
The examiner concluded that it would have been prima facie obvious to package
the reagents taught by Rosen into a kit because Rosen “teaches mutations at –308 [of
TNF-α] and aa13 and aa26 [of TNF-β] which are associated with predisposition to liver
rejection.” Id., page 12. Similarly, the examiner concluded that it would have been
obvious to package Tarkowski’s reagents in a kit because “Tarkowski specifically
teaches two polymorphic genes which are associated with AD [Alzheimer’s disease].”
Id., page 13.
Appellant argues that the examiner’s rejection should be reversed because,
among other things, the cited references do not provide a sufficient suggestion or
motivation to combine their teachings. See the Reply Brief, pages 13-15 and 17-19.
We agree with Appellant that the references relied on by the examiner do not
support a prima facie case of obviousness. “[T]he Examiner bears the burden of
establishing a prima facie case of obviousness based upon the prior art. ‘[The
Examiner] can satisfy this burden only by showing some objective teaching in the prior
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