Appeal No. 1995-2920
Application 07/999,172
attempted to obtain the plants of ‘602 or ‘605. . . nor obtain a statement from the inventor
or assignee to establish if the plants are fertile or not.” See the Answer, pages 9 and 10.
Thus, the issue to be resolved in deciding this appeal is not whether any of the
references inherently discloses a cultivar with the requisite characteristics, rather, the issue
comes down to determining where the burden rests in establishing whether or not the prior
art plants are diploid seed propagatable.
It is well settled that the initial burden of establishing unpatentability rests on the
examiner, In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Thus, the examiner is charged with establishing that an anticipatory reference meets every
limitation of a claimed invention. However, in an apparent reference to In re Best, 562
F.2d 1252, 195 USPQ 430, (CCPA 1977), the examiner argues that requiring the
examiner to establish that the prior art plants are inherently diploid seed propagatable
places an unfair burden on the Office as the examiner is not in a position to observe the
prior art plants per se. As set forth in In re Best, 977 F.2d at 1255, 24 USPQ2d at 433:
Where, as here, the claimed and prior art products are identical of
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 . . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products [footnote omitted].
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