Appeal No. 1998-0968
Application No. 08/031,075
against group A streptococci cell walls would recognize other determinants, and would not
bind N-acetylglucosamine, no matter how presented. The relevant question is whether
most (or any) monoclonal antibodies recognizing both the terminal N-acetylglucosamine on
group A streptococcus and N-acetylglucosamine conjugated to BSA (as is the case with
Nahm’s antibody) would “not have the properties of the monoclonal antibodies of the
present invention (the ability to bind mammalian cells or membranes . . . containing
terminal N-acetylglucosamine).” The declaration does not address this point.
In our opinion, neither of appellants’ arguments is particularly compelling. On the
other hand, it cannot be said that the extrinsic evidence relied on by the examiner
establishes that HGAC-1 necessarily possesses all the binding properties required by the
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claims. Inasmuch as “[t]he Patent Office has the initial duty of supplying the factual basis
for its rejection,” and “we may not resolve doubts in favor of the Patent Office determination
6We note that the examiner, although relying on a theory of inherency, did not
invoke the principles of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA
1977):
Where, as here, 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 inability to manufacture products or to obtain and compare
prior art products [footnote omitted].
Nevertheless, we take no position on whether the facts of this case, as developed
on this record, justify shifting the burden of proof to appellants.
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