Appeal No. 95-4464
Application 07/605,788
F.2d 894, 904-905, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Specifically, the appellants argue that (1) “Dr. Kohn’s expert
opinion that a medium specifically designed to maintain the
growth of a cell type of one species, would not be expected to be
useful in the maintenance and growth of a cell type of a
different species,” (Brief, p. 8) and (2) it is unpredictable as2
to whether the response of cells to stimuli in culture will mimic
their response to the same stimuli in situ (Brief, p. 10).
Although argued extensively by the appellants in the Brief
(Paper No. 32), Reply Brief (Paper No. 35) and supplemental Reply
Brief (Paper No. 37), and by the examiner in the Answer (Paper
No. 33), supplemental Answer (Paper No. 36), and second
supplemental Answer (Paper No. 38) we find it unnecessary to pass
on the merits of the relative positions with respect to issue
(1). Rather, we find conspicuous in its absence, any rebuttal by
the examiner to the appellants’ second argument. That is, the
examiner fails to contest the appellants’ position that due to
the potential differences between the neurons disclosed by Talamo
which are derived from autopsies (and, therefore, comprise fully
differentiated neurons), those skilled in the art would not have
2The appellants refer to the declaration of Dr. Kohn,
executed March 23, 1993, Paper No. 23.
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