Appeal No. 95-1364
Application No. 07/919,287
As we indicated above, the examiner has the burden of proof. The examiner must provide
evidence or reasoning tending to show that the person of ordinary skill in the art could not practice the
invention with unexemplified compounds and etiological agents within the scope of the claims without undue
experimentation. The examiner has not met that burden. The examiner has presented no evidence or
reasoning tending to show that undue experimentation would be necessary.
The examiner notes that the disclosure as filed does not include an “OX” compound as required
1 2
by, for example, by claims 1 and 14. However, these claims expressly require OX and OX to be OH
thus limiting these claims to hydroquinone derivatives. The examiner has not provided any evidence which
establishes that the person having ordinary skill in the art would not be able to practice the claimed invention
using hydroquinone derivatives without undue experimentation.
The rejection of claims 1, 5-9, 12-15, 21, 23-28 and 31-36 under 35 U.S.C. § 112, ¶ 1, is
reversed.
The prior art rejections
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The rejection of claims 1-6, 8-9, 13-17, 30, and 31-36 under 35 U.S.C. § 102(b)
The examiner has rejected these claims over either of Grinev or Bogdanova, two Chemical
Abstracts, abstracting Russian language articles by Grinev et al. and Bogdanova et al.
For a reference to be anticipatory, it must describe, either expressly or under the principles of
inherencey, each and every feature of the claimed invention. Verdegaal Bros. v. Union Oil Co., 814 F.2d
628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987); RCA Corp. v. Applied
Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). Neither abstract
appears to expressly describe a compound falling within the scope of rejected claims 1-6, 8-9, 13-17, or
31-36, and the examiner has not provided an explanation of how the other limitations of the claims are met
5 The examiner’s statement of the rejection also refers to claim 21. Examiner’s Answer, p. 8.
However, claim 21 has apparently been canceled.
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