Appeal No. 1997-4380
Application No. 08/147,878
Then the examiner cites Wagner, Stull, Wu-Pong and Miller to support his
conclusion (Answer, page 5) that “[a]t the time the application was filed, this
[delivery of oligonucleotides in vivo] was not a trivial matter.” Appellants argue
(Brief, page 6) that “[a]pplicants provide numerous examples in the ‘Background of
the Invention’ section of the application in which oligonucleotides have been used in
vivo” citing a number of PCT references. In response the examiner simply
concludes without reasoned analysis that (Answer, page 11) without reasoned
analysis that:
Appellants cite a number of published PCT applications which
allegedly show that oligos can be used in vivo. This argument is not
persuasive because the review articles cited by the [e]xaminer were
all published more recently. These reviews clearly indicate that in
vivo use of oligos required more than routine experimentation at the
time the application was filed.
We are not persuaded that the examiner met his burden merely because the
references he cites where published closer to the date the application was
examined than the date of invention, or the date of those references presented in
appellants’ specification in support of enablement. We remind the examiner that:
[I]t is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is inconsistent with
the contested statement. Otherwise, there would be no need for the
applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure [emphasis added].
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 370 (CCPA 1971). See also
In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (CAFC 1993) (the PTO
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