Appeal No. 1997-3116
Application 08/294,953
disclosed by Stiles would be successful if applied to the T. ni cell lines disclosed
by Granados (‘435). The rejection of claims 1-8 under 35 U.S.C. § 103 is
therefore reversed.
2. The rejection of claims 9 and 10.
The examiner rejected claims 9 and 10 as obvious over Granados (‘418)
and Wickham. According to the examiner, “Granados and Wickham et al
disclose an insect cell line derived from the eggs of Trichoplusia ni. Granados
also discloses that the cell line is susceptible to various baculoviruses.” Office
Action (Paper No. 3), page 8. The examiner considered these similarities
sufficient to shift the burden to Appellant to show that the claimed cells differ from
the prior art cells.
Appellant argues that “[t]he references relied upon by the Examiner
merely teach other T. ni cell lines established in media including serum. This
rejection should be reversed for all of the reasons for [sic] stated above for the
reversal of the rejection of claim 1.” Appeal Brief, page 7.
“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of showing
that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA
1977).
In responding to the examiner’s rejection of claims 9 and 10, Appellant
relies on the same “expectation of success” argument that he makes in regard to
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