Appeal No. 1996-1281
Application 07/945,295
prior art products do not necessarily or inherently possess the characteristics of his
claimed product. We do not intend to suggest that the examiner can only meet this
burden by presenting prior art which includes both the amino acid sequence and the
nucleotide sequence which would encode a particular protein. It is sufficient if the
examiner presents evidence which would reasonably establish that the product of the
reference reasonably appears to be identical or substantially identical with the claimed
product. Should the examiner determine that the protein disclosed by Targoff
reasonably appears to fall within the scope of claim 11, the examiner should also weigh
the evidence represented by the comparison of the bovine protein with the human
protein which the appellants urge is present in Example 3 at page 24 of the
specification.
Should it be determined, having weighed all of the evidence, that the claims are
properly rejectable under either 35 U.S.C. § 102 or 35 U.S.C. § 103, the examiner
should then issue an appropriate office action setting forth the basis for the rejection
and provide appellants with the appropriate opportunity to respond.
CONCLUSION
The examiner's rejection of claim 11-15 and 26 under 35 U.S.C. § 112, second
paragraph, is reversed.
The examiner's rejection of claims 11-13 under 35 U.S.C. § 102(b), or
alternatively, under 35 U.S.C. § 103 is vacated.
REVERSED
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