Appeal No. 1999-1708
Application 08/731,320
Sheppard, 52 CCPA 859, 339 F.2d 238, 144 USPQ 42 (1964); and In re Brown, 51
CCPA 1254, 329 F.2d 1006, 141 USPQ 245 (1964).
We do not agree with the examiner that Everard places in the hands of the public
the DNA sequence of SEQ ID NO:1.
In the present case, while the reference discloses that a cDNA clone was isolated
which produced a polypeptide capable of reacting with an antibody made against
authentic M6PR, Everard does not particularly or inherently describe the specifically
claimed DNA sequence. At best, Everard, may suggest the probability or possibility that
a DNA of the claimed sequence exists, as one of a large number of the degenerate DNA
sequences which could possibly code for the M6PR gene. Compare In re Bell, 991 F.2d
781, 26 USPQ2d 1529 (Fed. Cir. 1993). Thus, Everard cannot and does not anticipate
the claimed DNA sequence of SEQ ID NO:1.
Nor do we find the disclosure of Everard to constitute sufficient evidence of the
claimed invention to shift the burden of proof to appellants to provide evidence that the
M6PR protein sequence described in Everard is not encoded by the claimed sequence.
Under appropriate circumstances the PTO can require an applicant to establish that a
prior art product does not necessarily possess the characteristics of the claimed product
when the prior art and claimed products are identical or substantially identical. See, In re
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