Appeal No. 2001-2308
Application 07/704,578
Rejection 1
Claims 28 and 29 stand rejected alternatively under 35 U.S.C. §102 or
35 U.S.C. §103 as anticipated by or obvious over Hirano, Weissenbach, or Zilberstein.
Under certain circumstances, the USPTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed product. For example, where the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical processes, the
USPTO can require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product3. However, the examiner
bears the initial burden of providing facts and reasons to believe that the prior art products
are identical or substantially identical to the claimed product.
Claim 28 requires a nonglycosylated protein in combination with a pharmaceutically
acceptable vehicle. In reviewing the Examiner’s Answer, nowhere do we find that the
examiner has acknowledged and discussed this aspect of the invention. Failure to
consider the subject matter of the claim as a whole constitutes legal error. Accordingly, all
rejections of claim 28 are reversed.
Claim 29 requires a product made by a specific process which is a non-
glycosylated protein having a specific amino acid sequence and is substantially free of
other protein. We find that the examiner has not provided adequate reasons to believe
3 In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
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