Appeal No. 1996-2123
Application No. 08/069,458
At page 9 of the Reply Brief, appellants state Athe claimed invention is directed to strains of
Acetobacter characterized by production of substantially low amounts of gluconic and ketogluconic acids.
The [e]xaminer=s arguments appear to relate to culture conditions rather than to the claimed strains.@ We
agree with appellants.
Upon return of this application, the examiner should clarify the basis of the rejection. In doing so,
the examiner should point to strain(s) of Acetobacter recognized in the prior art, and explain why the
strain(s) are so similar to those claimed as to shift the burden to appellants to demonstrate a patentable
difference. Keeping in mind that the initial burden of establishing unpatentability rests on the examiner, the
examiner=s explanation should address all the limitations found in each claim. In re Oetiker, 977 F.2d
1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). For example, for claim 49, a biologically pure strain
of Acetobacter . . . characterized (1) as being capable of producing substantially pure reticulated cellulose,
and (2) by production of substantially low amounts of gluconic acid and ketogluconic acids in glucose-
containing media.
OTHER ISSUES
Status of the claims :
In appellants= preliminary amendment, filed April 10, 1991 (Paper No. 2), at box 4, appellants
direct the Office to cancel in this application (07/683,304) original claims 2-48 of the prior application
before calculating the filing fee. Appellants state at box 12 of this preliminary amendment, filed April 10,
1991 (Paper No. 2), that AI hereby verify that the attached papers are a true copy of prior application
Serial No. [07]196,496 as originally filed on May 19, 1988.@ Similarly, in appellants= preliminary
amendment, filed April 10, 1991 (Paper No. 3), at page 2, appellants direct the Office to Acancel all claims
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