Appeal 2007-1897
Application 10/044,846
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990). Shifting the burden under these
circumstances is reasonable because of “the PTO’s inability to manufacture
products or to obtain and compare prior art products.” In re Best, 562 F.2d
1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
The issue raised by this appeal, then, is whether the Examiner has
provided a reasonable basis for shifting the burden to Appellants to establish
that the prior art and presently claimed cross-linked polysaccharides are
structurally different.
Initially, we note that the Examiner’s assertion that the claimed
compounds and Qin’s compounds are cross-linked using “the same
crosslinking agent, i..e. ethylene glycol” (Answer 4) is simply incorrect. As
discussed above, the present Specification teaches that the presently claimed
compounds of formula 2 are produced by cross-linking polysaccharides with
activated polyalkylene glycols, not alkylene glycols like ethylene glycol or
butylene glycol (Spec. 8-11).
The distinction is important because Appellants assert that Qin’s use
of an alkylene glycol cross-linking agent results in “a monomer cross-linked
backbone” (Reply Br. 5), which can be schematically represented as:
Polysaccharide-O-Alkylene-O-Polysaccharide (id.). In addition, Appellants
assert that Qin’s “polysaccharide is crosslinked by means of a pair of ester
linkages” (Appeal Br. 5). In contrast, the presently claimed polysaccharide
is cross-linked with an activated polyalkylene glycol, and as a result, has “a
polymer cross-linked backbone” (Reply Br. 5) “comprising repeating and
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