Appeal No. 1997-4272
Application No. 08/429,053
Before an applicant can be required to show rebuttal evidence, the examiner
must meet her burden of establishing a prima facie case, including (where
appropriate) evidence that the claimed product is not patentably distinct from that
of the prior art. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967) (“The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies” in the cited
references.); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) (“After a prima facie case of obviousness has been established, the
burden of going forward shifts to the applicant.”).
The examiner has pointed to no evidence in the record to support her
assertion that the claimed cell lines do not “differ in any significant manner” from
those of the prior art. Since the examiner has not met her burden of establishing
prima facie obviousness, Appellants are not required to produce rebuttal
evidence. The rejection of claim 11 under 35 U.S.C. § 103 is reversed.
3. Claim 24
The examiner also rejected claim 24 as obvious over the combined
teachings of Walker and Kalt-Torres. Before we reach the question of
obviousness, however, we must address the issue of claim construction. Claim
24 recites a “monoclonal antibody directed specifically against proteins having
saccharose phosphate synthetase (SPS) activity of Sequence ID #11 or
Sequence ID #12.” This claim language is, on its face, open to two
interpretations: (1) a monoclonal antibody directed against a protein of
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