Appeal No. 1998-1866
Application 08/406,883
“identical or substantially identical.” That determination must be made case-by-case
based upon the facts in the individual case.
In finding that strain F361 of Blanchette and strain SKB-1152 of the present
invention are “inherently the same,” the examiner made a determination which eliminates
the need to apply the principle of Best. The rationale of Best is that the USPTO cannot
make that determination. Simply put, the USPTO does not have sufficient facts to
determine whether the respective microbes are “inherently the same.” Nor can the
USPTO conclude that the subject matter of the claim would have been obvious since it
cannot determine whether the microbes differ. Rather than make the explicit finding
that the respective microbes are “inherently the same,” the examiner need only identify
the common characteristics of the respective microbes and explain why those common
characteristics allow one to reasonably conclude the respective microbes are “identical
or substantially identical.” While the court in Best spoke of “inherency” under 35 U.S.C. §
102 and prima facie obviousness under 35 U.S.C. § 103, the fact remains that the
USPTO is not in a position to make either conclusion since the record does not allow
one to determine if and how the claimed subject matter differs from the prior art
reference. At best, the examiner is in the position of inferring from the facts available
that the claim is unpatentable. If the facts in a case a llow the examiner to make that
inference, the examiner may properly invoke the principles of In re Best and shift the
burden to applicants to come forward with evidence establishing that the respective
products, here microbes, do differ.
Instructive on this point is the following statement in In re Spada, 911 F.2d 705,
707, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990):
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