Appeal No. 1998-1866
Application 08/406,883
In response to the PTO’s asserted prima facie case the applicant may
argue that the inference of lack of novelty was not properly drawn, for example if
the PTO did not correctly apply or understand the subject matter of the reference,
or if the PTO drew unwarranted conclusions therefrom. However, when the PTO
shows sound basis for believing that the products of the prior art and the
applicant are the same, the applicant has the burden of showing that they are
not. In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986); In re
Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
See also In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980) (“Thus, the
dispositive issue is whether appellants have proved that the Barnes process does not
result in fasteners having the claimed crystallization shrinkage.”).3
Here, we believe the facts that the respective fungi are white-rot fungi and
degrade lignin provide the thinnest of margins, if at all, to conclude that the respective
microbes are “identical or substantially identical.” As explained above, if these are the
only two relevant properties needed in order to invoke the pri nciples of In re Best, we
dare say appellants should be concerned that a multitude of rejections are possible
which have yet to be made.
Be that as it may, appellants did not argue in this appeal that the examiner
unreasonably shifted the burden of providing such evidence. Rather, as explained
above, appellants’ position is premised upon the fact that Blanchette strain F361
possesses laccase activity while their strain SKB-1152 does not. The examiner has not
accepted this argument stating at pages 5 -6 of the Examiner’s Answer:
3 To avoid confusion as to the facts and reasons supporting an examiner’s rejection under these
circumstances and consistent with the “102/103” language used by the the court in cases such as Spada
and Best, it may be better for an examiner to simply state that the claim is considered to be unpatentable
under 35 U.S.C. § 102/103 on the basis of a specified reference. That opening statement should be
followed by the examiner’s facts and reasoning as to why it is proper to shift the burden of going forward
to applicant. It would be helpful if in stating the rejection the examiner relied upon cases such as Best,
Spada and Fitzgerald so there is no confusion as to the approach taken by the examiner in rejecting the
claim. Again, under these circumstances the examiner is not in a position to make the specific findings
needed to conclude that the claim is either anticipated or obvious on the basis of the reference.
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