Appeal No. 1998-2598
Application No. 08/549,078
present record -- the material necessary for reaching a definitive answer on the issue --
persuades us that the examiner has failed to set forth a prima facie case of unpatentability.
We speculate that, in many cases where the effective filing date of a patent
containing continuation-in-part applications in the chain of priority is material to
patentability, the examiner may make a rejection in view of the earliest possible, but
unproven, effective filing date. An applicant may then, in preparing a response, obtain a
copy of the relevant application and decide whether alleging lack of section 112 support
for the patented invention would be appropriate.
We are sympathetic to the examiner’s plight in apparently not being able to
possess the relevant patent application until late in prosecution. However, the burden of
producing evidence of prima facie unpatentability falls on the examiner. If the relevant
evidence cannot be produced, the allocation of burdens requires that the inference
resulting from the lack of production must be construed in an applicant’s favor.
On the other hand, we are also sympathetic to appellant’s plight in attempting to
respond to a rejection without being presented with the evidence in support thereof. The
instant situation is, by analogy, similar to using the teachings of some reference not
obtainable by appellant, with the examiner setting forth unrebuttable presumptions with
respect to what the reference teaches. The Answer’s terse allegation that “relevant
sections” of Butts ‘231 “are sufficiently taught” in the relevant patent application need not
be accepted at face value by appellant. Moreover, for all the allegation states, an
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