Appeal No. 1997-2385
Application No. 08/271,571
Finally, we find nothing indefinite with the language "that includes the further step"
present in claims 31 and 33. The examiner's suggestion of "further including the step of"
appears to be no more than alternative grammatical expression.
Accordingly, in view of the foregoing, we will not sustain the rejection of claims 30-
34 as indefinite under § 112, second paragraph.
3. Rejection of claims 30-34 under § 103 over Palmer, Sugisawa or Lioutas in view of
appellants' admissions on page 1, lines 25-28 of the specification
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). It is also
axiomatic that
Where claimed subject matter has been rejected as obvious in view of a
combination of prior art references, a proper analysis under § 103 requires,
inter alia, consideration of two factors: (1) whether the prior art would have
suggested to those of ordinary skill in the art that they should make the
claimed composition or device or carry out the claimed process; and (2)
whether the prior art would also have revealed that in so making or carrying
out, those of ordinary skill would have a reasonable expectation of success.
See In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). Both the suggestion and the reasonable expectation of
success must be founded in the prior art, not in the applicant's disclosure. Id.
See also In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1442 (Fed.
Cir. 1991).
Here, claim 30 sets forth a number of limitations that are not addressed by the
examiner. For example, claim 30 requires (a) plants containing therapeutic active
ingredients; (b) that the harvested plants contain no less than two thirds of the plants'
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