Appeal No. 1997-1717
Application No. 08/068,256
As stated in In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA
1977), quoting from In re Swinehart, 439 F.2d 210, 212-33, 169 USPQ 226, 229 (CCPA
1971):
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not
possess the characteristic relied on.
This burden was involved in In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA
1971), and is applicable to product and process claims reasonably considered as
possessing the allegedly inherent characteristics. In re Best, 562 F.2d at 1255, 195
USPQ at 433. On the particular facts of this case, however, the examiner has not
shown sound basis for believing that the prior art compounds possess 5-
lipoxygenase inhibiting activity. Unlike the situation presented in Best, the examiner
has not set forth “reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter [5-lipoxygenase inhibiting
activity] may, in fact, be an inherent characteristic of the prior art.” Accordingly, the
examiner is not in position to invoke the above-quoted rule of law enunciated in Best
and cases cited therein.
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007