Appeal No. 1997-2364
Application 08/137,086
phosphopeptide aggregates.” “[I]n order to maintain the integrity of the anticariogenic
phosphopeptide aggregates,” and “allow[] separation of the anticariogenic from the non-
anticariogenic phosphopeptides,” “[t]he addition of a CaCl solution, or some other
2
suitable di/trivalent metal ion . . . is essential” during diafiltration, and the “molecular weight
exclusion limit of the membrane filter should not be less than 10,000 or greater than about
20,000.” Specification, pages 1, 3 and 4.
Rejection I
Claims 1 through 6, 8 through 14, 17 and 18 are directed to a process of preparing
selected phosphopeptides, and to products of that process. The claims stand rejected as
anticipated by, or in the alternative, as obvious over Brule.
It is well settled that the initial burden of establishing unpatentability rests on the
examiner, In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
That being said, we recognize that there are exceptions where the record justifies shifting
the burden to appellant to show a difference between the claimed invention and the prior
art. As explained in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977):
Where . . . the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product .
. . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007