Ex parte KING et al. - Page 5




                 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                            


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