Appeal 2007-0082
Application 10/171,498
A prima facie case of obviousness is established when the teachings from
the prior art itself would appear to have suggested the claimed subject matter to a
person of ordinary skill in the art. In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993). An obviousness analysis requires that the prior art both
suggest the claimed subject matter and reveal a reasonable expectation of success
to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991). In the present case we find the Examiner has
established a prima facie case of obviousness, and that the evidence before us
establishes that there was a reasonable expectation of successfully obtaining a
genetically transformed corn seed as of Tomes' filing date.
Appellants fail to show by the weight of the evidence that at the time of
Tomes and Strauch one of ordinary skill in the art would not have had a reasonable
expectation of obtaining a fertile monocot, corn seed, transformed with PAT. The
obviousness rejection is affirmed.
Obviousness-type Double Patenting
The Examiner's Answer indicates on page 3 that the claims were rejected in
the final rejection for obviousness-type double patenting over U.S. Patent No.
5,550,318, U.S. Patent No. 5,489,520, and U.S. Patent No. 6,395,966. Appellants
did not address this issue on appeal in the Appeal Brief, and thus do not contest
these rejections. 37 C.F.R. § 41.31(c). At the time of the Examiner's Answer a
Terminal Disclaimer had not been received, but Appellants had agreed to file a
Terminal Disclaimer to overcome these rejections. (Reply Br. 10). These
rejections are summarily affirmed, as they have not been contested by Appellants.
- 12 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013