Appeal No. 2000-0600 Page 7
Application No. 08/642,268
The [e]xaminer’s Answer alleges that the assays disclosed in
the specification and the examples in the art of record (e.g., Muller)
are only art-recognized for, at best, the treatment of platelet
aggregation and thrombosis (as is recited, e.g., in cla[i]m 8).
However, the [e]xaminer has provided no reasons to cast doubt on
appellants’ assertion that these models are, in fact, suitable for
determining how to treat the diseases encompassed by the claims
(e.g., thromboses, osteolytic disorders, kidney failure, tumors). As
was discussed in the Appeal Brief, the burden lies with the [e]xaminer
to provide evidence which raises doubt about what applicants have
disclosed as to the utility of the invention (In re Marzochi et al[.]), and in
the absence of such evidence, the rejection cannot be maintained.
Here again we find no analysis of the Wands factors by the examiner.
Instead, we find only the examiner’s unsupported conclusions as to why the
specification does not enable the claimed invention. As set forth above, in the
absence of a fact-based statement of a rejection based upon the relevant legal
standards, the examiner has not sustained her initial burden of establishing a prima
facie case of non-enablement. We recognize appellants’ argument (Brief, page 7):
Again, the [e]xaminer appears to set forth an initial burden upon
[a]ppellants to provide tests as to the applicability of the compounds
to many of the several embodiments of the claims. Appellants urge
that such burden is unfounded in the absence of reasons for doubting
the objective truth of the statements in the specification on how to
conduct the methods, explanations why the truth or accuracy of such
statements are doubted and acceptable evidence or reasoning to
back up the assertions that such statements are insufficient.”
We again remind the examiner that the burden of proof does not shift to appellant
until the examiner first meets her burden. Marzocchi, 439 F.2d at 223-224, 169
USPQ at 369-370. In our opinion, the examiner has not met her burden on this
record.
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