Appeal No. 94-4393
Application 07/692,921
Claim 7
It does not appear that the examiner has separately considered the patentability of
product claim 7. Claim 7 is directed to a purified heparin subspecies or fraction which has
anticoagulant activity but does not bind to TGF-$. The 12 references cited by appellants
referenced above indicate that numerous workers have separated heparin into various
fractions for a variety of reasons. It does not appear from this record that the examiner has
considered that such prior art may be relevant in determining the patentability of claim 7.
Consider In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) wherein the
court held that under appropriate circumstances the Patent and Trademark Office (PTO)
can require an applicant to establish that prior art products do not necessarily or inherently
possess the characteristics of the claimed product.
Upon return of the application, the examiner should review all relevant prior art
concerning separating heparin into various fractions as well as relevant legal precedent
such as Best. The examiner should determine whether the prior art describes heparin
fractions under circumstances where it would be reasonable to shift the burden to
appellants to establish whether such fractions necessarily or inherently possess the
characteristics required by product claim 7.
7
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