Appeal No. 95-3268
Application 07/521,695
cited functional claim language. Additionally, we find nothing which would reasonably
suggest that the 21 day period of Example A of Aston (I) would not be regarded as a
"prolonged period of time." The reference does not teach that the observed effect on
weight gain ended after the 21 days, only that the test data was recorded only for that
specified time period. Similarly, there is nothing in the specification which would indicate
that the observed weight gain in the mice of Example A of Aston (I) treated with the growth
hormone and antibody combination as compared to that of growth hormone alone, would
not meet the requirement that "the weight of the vertebrate, non-human continues to
exceed that of a vertebrate, non-human treated with the same amount of said somatotropin
alone over a given period of time" as required by the claim 23. Where the Patent Office
has reason to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to prove that the subject matter
shown in the art does not possess the characteristic relied on. This burden is applicable to
product and process claims reasonably considered as possessing the allegedly inherent
characteristics. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) and
In re Swinehart, 439 F.2d 210, 212-213, 169 USPQ 226, 228- 229 (CCPA 1971). On the
record before us, the appellants have offered no evidence which would demonstrate that
the method disclosed Aston (I) would not result in the functionally defined results of
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007