Appeal No. 2006-2556 Page 8
Application No. 09/977,155
“In proceedings before the Patent and Trademark Office, the 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
art or that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992) (citations omitted,
bracketed material in original).
We agree with Appellants that the examiner has failed to establish the prima
facie obviousness of claims 15-20.
Each of claims 15-20 depends from claim 1. As discussed supra, claim 1
requires the use of a protease that cleaves the transmembrane domain of an LDL
receptor, resulting in release of the C-terminal tail from the membrane. As also
discussed supra, Willnow does not disclose a process in which a protease cleaves the
C-terminal tail of an LDL receptor from a cell membrane.
The examiner has not pointed to, and we do not see, any teaching in Herz that
remedies this deficiency in Willnow’s disclosure.
We agree with the examiner that Herz discloses that the proteins recited in
claims 15-20 are members of the LDL receptor gene family. However, we see nothing
in Herz suggesting that it would have been obvious to assay for the activity of a
protease that cleaves the C-terminal tail of a receptor from the cell membrane, as
required in claims 15-20. We therefore reverse the obviousness rejection of claims
15-20.
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