Appeal No. 1995-4400
Application 07/694,302
There is no dispute that '91 MTA recites monoclonal antibody 720. The issue is
whether a prima facie case of anticipation under 35 U.S.C. § 102(a) has been made out
under these facts. We find that it has not.
It is the examiner who bears the initial burden of establishing reasons of
unpatentability. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992). It is the examiner who must present a prima facie case of anticipation showing that
"the invention was known or used by others in this country ... before the invention thereof by
the applicant for patent", 35 U.S.C. § 102(a).
After careful review of the examiner's answer (pp. 3-5), we can find only a single
paragraph explaining examiner's position (the rest of examiner's discussion is a response
to appellants' arguments in the brief). That paragraph states that:
Claims 1-4, 7, 11, 15, and 16 are rejected under 35 USC §102(a) based upon a
public knowledge or use of the invention in this country before the invention thereof
by the applicant for a patent. The Material Transfer Agreement to Specter dated
February 28, 1991 (hereinafter "'91 MTA"), for monoclonal antibody 720 is evidence
that the invention was known or used by others before the filing date of the instant
application".
We find the reasoning in this paragraph to be an insufficient foundation for a prima facie
case of anticipation of the claims over '91 MTA and for then shifting the burden to
appellants to show otherwise.
First of all, "public knowledge or use" is not a condition of unpatentability under 35
USC § 102(a). Examiner is confusing this §102(a) with §102(b).
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