Appeal No. 1997-4272
Application No. 08/429,053
speculation and assumptions is legal error.). Therefore, we vacate the rejection
of claim 23 under 35 U.S.C. § 103.
2. Claim 11
The examiner rejected claim 11 as obvious over the combined teachings
of Walker and Kalt-Torres. The examiner argues that those skilled in the art
would have been led to combine the partially purified maize SPS enzyme of Kalt-
Torres with the hybridoma-producing process of Walker with a reasonable
expectation of obtaining hybridomas that secrete monoclonal antibodies specific
for maize SPS. Examiner’s Answer, pages 6-7. The examiner does not allege
that either reference discloses the specific hybridomas recited in the claim but
argues that the claimed cell lines
are obvious since the record does not contain any evidence that the
cell lines differ in any significant manner or produce monoclonal
antibodies that differ in any significant aspect from hybrid[oma] cell
lines that one of ordinary skill in the art would expect to generate
using an extract of maize as the starting antigen (Kalt-Torres et al.)
in the basic method of Walker.
Id., page 8.
The examiner is correct that if the products made obvious by the prior art
reasonably appear to be the same as those claimed, Appellants bear the burden
of showing that they are not. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”). In this case, however, the
examiner’s attempt to shift the burden of proof to Appellants was premature.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007