Appeal No. 1998-1866
Application 08/406,883
taught by the prior art and to establish patentable differences. See In re Best, 562 F.2d
1252, 195 U.S.P.Q. 430 (CCPA 1977); Ex parte Gray, 10 U.S.P.Q. 2d 1922, 1923
(BPAI).”
Appellants’ position on appeal is summarized at page 3 of the Appeal Brief as
follows:
Blanchette et al. ‘945 disclose a white-rot fungus useful for degrading the
lignin component of pulps to enhance brightness stability and strength properties
(col. 4, lines 66-67). This fungus is described as Scytinostroma galactinum strain
F361. However, Blanchette et al. ‘945 also disclose in Example 1-A (col. 7, lines
34-40) that the presence of laccase was shown by analysis of enzymes from the
supernatant of cultures of F361. In contrast, experimental results demonstrating
that the SKB-1152 strain had no laccase activity were reported by all of the
inventors of the present application and two other co-workers in the 38th Lignin
Symposium held in Japan on the 15th and 16th of November, 1993. This data
was published on page 131 of the report on the symposium, which appellants
provided as Exhibit A to Paper No. 14. A full copy of the report was provided
with a supplemental submission filed on June 4, 1994 (Paper No. 15).
Appellants also provided a paper in the English language which discusses the
lack of laccase activity of the SKB-1152 strain as Exhibit A to Paper 17, filed on
July 28, 1997.
DISCUSSION
We first note that the premise of the examiner’s anticipation rejection is subject to
question. The examiner has found, on the basis that strain F361 of Blanchette is a
white-rot fungus which degrades lignin, that strain F361 of Blanchette and strain SKB-
1152 are “inherently the same.” If those facts are sufficient to support the examiner’s
inherency theory, we are surprised there is only one rejection of record as both
Blanchette and the present inventors indicate there are numerous white -rot fungi which
degrade lignin. Using the examiner’s logic, all white-rot fungi which degrade lignin would
be “inherently the same.” We believe most observers would agree that all white-rot fungi
which degrade lignin are not “inherently the same.”
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