Appeal No. 1995-2297
Application No. 07/797,493
of mouse origin, and human cells account for only approximately 0.3 to 3.0% of the bone
marrow in Kamel. See, Brief, pages 6 and 10. Appellants contrast the prior art with the
bone marrow of their mice in which at least 30% of the cells are of human origin. See,
Brief, pages 6 and 10. We affirm the examiner with regards to claims 4 and 6-8, and
2
reverse the examiner’s rejection as it applies to claims 1 and 2.
“Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden is upon the
applicants to come forward with evidence establishing an unobvious difference between
the claimed product and the prior art product. In re Best, 562 F.2d [1252,] 1255, 195
USPQ [430,] 433[ (CCPA 1977)].” In re Marosi, 710 F.2d 799, 803,
218 USPQ 289, 292-93 (Fed. Cir. 1983).
Appellants demonstrate that the bone marrow is comprised of at least 30% human
origin. However, as the examiner notes, this distinction over the prior art is not
2We recognize appellant’s request that claims 1, 2, 4 and 6-8 stand or fall together,
however, upon review of this record, we have determined that claims 1 and 2 can be
properly distinguished from claims 4 and 6-8. Therefore, we have considered claims 1
and 2 separate from claims 4 and 6-8.
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007