Appeal No. 1997-3461
Application No. 07/806,932
differing metastatic potential and, therefore, it is not encompassed by the term “nm23”
as defined by the examiner. After reasoning that only one nm23 gene exists, the
examiner concludes that “[t]he very basis of the pending rejections is that the human
nm23 is an obvious species variation of murine nm23.” See, Answer, page 11.
For a number of reasons appellants refute the examiner’s conclusion that only
one nm23 gene exists. See generally, Reply Brief. At page 5 of the Reply Brief,
appellants cites to the bridging paragraph of pages 3 and 4 of the specification which
describes nm23 as follows “[a]pplicant has presently found two different and distinct
human genes (DNA) which encode for two different and distinct nm23 proteins. The
first gene is referred to herein as nm23-H1. The second gene is referred to herein as
nm23-H2S.”
We remind the examiner that “[t]he Patent Office has the initial duty of supplying
the factual basis for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Therefore, we are not
persuaded by the examiner’s speculation regarding the appropriate definition of “an
nm23 gene” which clearly conflicts with the record in this case.
We emphasize that the initial burden of establishing reasons for unpatentability
rests on the examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007