Appeal No. 1996-0848
Application 07/624,053
Hoeksema, 399 F. 2d 269, 273, 158 USPQ 596, 600 ("[I]t is sound law, consistent with the
public policy underlying our patent law, that before any publication can amount to a
statutory bar to the grant of a patent, its disclosure must be
such that a skilled artisan could take its teachings in combination with his own knowledge
of the particular art and be in possession of the invention.") (citation omitted). Here, the
examiner has failed to come to grips with the specific points raised by appellant's
arguments and the declaration evidence presented to demonstrate that the prior art relied
upon by the examiner would not have been enabling. It is the initial burden of the patent
examiner to establish that claims presented in an application for a patent are unpatentable.
In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). However,
the burden on the examiner does not end there. Where, as here, the appellant provides
arguments and evidence in support of patentability of the rejected claims, the examiner
must step back and consider anew the question of whether the claims are properly
rejected having weighed the evidence and arguments made of record in support of
patentability against those in support of unpatentability. See In re Hedges, 783 F.2d 1038,
1039, 228 USPQ 685, 685-86 (Fed. Cir. 1986);
In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976); In re Piasecki,
745 F.2d 1468, 1471, 223 USPQ 785, 788 (Fed. Cir. 1984). On balance, we find the
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