Appeal No. 2002-1479 Page 4
Application No. 08/794,042
purifies the enzymatically active light chain, free from enterokinase heavy ch[a]in
also from bovines and therefore it necessarily flows that the claimed amino acid
sequence is an inherent property of the purified bovine enterokinase light chain
of Light et al.” Id.
(4) “While the product/composition of the prior art is purified from the
native source and is not characterized as ‘recombinant’ (i.e. produced by a
recombinant DNA), the recitation of recombinant does not convey a structural or
functional difference . . . [because the] purification or production of a product by a
particular process (i.e. the instant recombinant) does not impart novelty or
unobviousness to a product when the product is taught by the prior art.” Id.,
pages 4-5.
Appellant argues, in a nutshell, that the Light reference relied on by the
examiner must be read together with previously published references, by the
same author, that are cited in the Light reference. When the prior art is viewed
as a whole, Appellant argues, the evidence is insufficient to support a prima facie
finding that the enzyme disclosed by Light is the same as the instantly claimed
enzyme, and therefore the prior art does not support a rejection under § 102.
See the Appeal Brief, pages 4-7, and the Reply Brief, pages 2-9.1
“[T]he Patent Office has the initial burden of coming forward with some
sort of evidence tending to disprove novelty.” In re Wilder, 429 F.2d 447, 450,
166 USPQ 545, 548 (CCPA 1970). “Under 35 U.S.C. § 102, every limitation of a
claim must identically appear in a single prior art reference for it to anticipate the
claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032
(Fed. Cir. 1997).
1 Appellant also argues that the product of claim 42 would not have been obvious in view of Light.
See the Appeal Brief, pages 7-9. However, as the examiner has pointed out, claim 42 does not
stand rejected under 35 U.S.C. § 103. Therefore, we need not address Appellant’s arguments
regarding nonobviousness, and we take no position on that issue.
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