Appeal No. 94-3255
Application 07/673,264
isolates and morphological mutants of methylotrophic Bacillus
MGA3 are identical, or substantially identical to the
methylotrophic Bacillus described in the prior art. In making
such a determination, the examiner should bear in mind the
holding of the court in In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977) that “[w]here, as here, the
claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63,
122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
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