Appeal No. 2001-1779
Application No. 09/398,898
In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). Moreover,
because the examiner did not establish that WO ‘069 inherently discloses the
claimed estrogenic activity, appellants need not provide evidence demonstrating
a difference between the prior art and the claims. See Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658, citing In re King, 801 F.2d 1324, 1327, 231 USPQ
136, 138 (Fed. Cir. 1986), and In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563,
566 (CCPA 1971) (applicant has burden of demonstrating difference between
claimed product and prior art product when PTO provides sound basis for belief
that the products are the same.). We therefore reverse the anticipation rejection
of claim 2 over WO ‘069.
For similar reasons, we find that the examiner has not established that US
‘926 anticipates claim 2. The rationale for the examiner’s holding of anticipation
is set forth at page 4 of the Examiner’s Answer as follows:
US ‘926 discloses a composition obtained from the
extraction of chickpeas with an organic solvent such as hexane,
methanol, or acetone (col. 1, lines 40-59). The extracts may be
administered topically (col. 8, lines 23-26). US ‘926 teaches that it
is within the skill of the art to calculate the effective amount of
active material needed to achieve a therapeutic effect (col. 8, lines
35-38).
Again, however, the examiner fails to address why any chickpea extract
disclosed by US ‘926 necessarily has the claimed estrogenic activity. In
response to appellants’ argument in this regard (see Appeal Brief, paragraph
spanning pages 10 and 11), the examiner states at page 5 of the Examiner’s
Answer:
5
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