Appeal No. 2000-0441 Page 3
Application No. 08/866,942
As indicated above, the claims stand rejected as unpatentable under 35 U.S.C.
§ 103, nevertheless, the examiner argues that “Applicant has not demonstrated any
patentable distinction conferred upon the claimed cell(s) as a result of being isolated
from a transgenic animal.” Paper. No. 7, page 4. The implication is that Foulkes
anticipates the claimed invention. Further, “[i]t is the Examiner’s position that
Appellant’s [sic] have not met their burden to illustrate that structural differences do
indeed exist in the first place and that these differences translate or result in activities or
functions that are distinct from those of cultured primary cells that have been “knocked-
in” after isolation from a non-transgenic animal.” Answer, page 3.
“[E]very limitation of a claim must identically appear in a single prior art reference
for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997). Moreover, “the Patent Office has the initial burden of
coming forward with some sort of evidence tending to disprove novelty.” In re Wilder,
429 F.2d 447, 450, 166 USPQ2d 545, 548 (CCPA 1970).
Here, the examiner cites no evidence tending to show that Foulkes cells and the
claimed cells are the same. Because we find that the examiner’s conclusory
statements are insufficient to discharge the Office’s initial burden of establishing a
prima facie case of anticipation, we find it unnecessary to address the declaration of
coinventor McKnight, wherein he states that “[p]rimary cells obtained from transgenic
animals are distinguishable from cell lines or primary cells modified by homologous
recombination . . . because genes ‘knocked in’ to a pluripotent stem cell are subject to
ontogeny - the many, diverse molecular modifications of the genome that result in
differentiation into primary cells, e.g.[,] cytosine methylation.” Paper No. 10.
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