Appeal No. 1995-1977
Application 07/669,403
cells have the following features: a) They are round cells, tightly packed with
large nuclei in relation to cytoplasm, and fairly prominent nucleoli.”
In addition, Piedrahita notes that the morphology of this cell line closely
resembles mouse teratocarcinoma cells. The instant specification similarly
states that the embryonic stem cells isolated by Appellants resemble
teratocarcinoma cells in their appearance and form of growth. See the
specification, page 23.
Thus, the porcine embryonic stem cells disclosed by Piedrahita share
several of the morphological features disclosed by the instant specification as
being characteristic of the claimed embryonic stem cells. In addition, none of the
properties of the P3 cells disclosed by Piedrahita are incompatible with their
being ungulate embryonic stem cells. We therefore agree with the examiner that
the cited reference supports a prima facie finding of anticipation, and shifts the
burden to Appellants to show that the prior art does not in fact disclose the
claimed invention. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”); Ex parte Maizel, 27 USPQ2d 1662, 1667-
68 (Bd. Pat. App. Int. 1992) (“When an examiner obtains a product which
reasonably appears to fall within the scope of that which is claimed by a patent
applicant, it is reasonable to shift the burden to the applicant to provide evidence
showing that the product of the prior art does not fall within the scope of
applicants’ [sic] claims.”).
In response to this rejection, Appellants argue that the claimed ungulate
embryonic stem cells differ in at least four ways from the previously known
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