Appeal No. 1996-1281
Application 07/945,295
undefined sequence, which includes at least one epitope, also of undefined sequence,
which would result in the protein being immunoreactive with an autoantibody present in
human sera where said antibody is immunoreactive with the protein having the amino
acid sequence set forth in SEQ ID NO. 2. It should be clear that the second
interpretation results in a claim of broader scope. A review of both the examiner's and
appellants' position as presented in this appeal would suggest the importance of
determining just what is encompassed by the claims. We leave to the examiner and
appellants the determination of the appropriate interpretations. Only after it is
determined what is encompassed by the claim, can one make the informed decision
whether the bovine Mi-2 antigen described by Targoff is reasonably encompassed by
the claim.
Having determined what is claimed, then the examiner is in the position to
determine whether the proteins described by Targoff can reasonably be said to fall
within the scope of claim 11. The examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of coming
forward with evidence or argument shift to the applicant. Id. In reconsidering the
patentability of the claims in this application we would urge the examiner to consider the
principles set forth in In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA
1977) and In re Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 228-29 (CCPA 1971)
which provide that where the claimed and prior art products reasonably appear to be
identical or substantially identical, the PTO can require an applicant to show that the
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