Appeal No. 2000-1910 Page 6
Application No. 08/785,716
different from the cited art. In contrast, the examiner suggests that the milling
process will disrupt or destroy the structure of the genome and therefore the
genetic “fingerprint” of the claimed wheat flour is indistinguishable from the prior
art.
The examiner however, has provided no evidence to support the position
that the milling process will mechanically disrupt the seed’s genome. Similarly,
we are not persuaded by the 1998 Anderson Declaration, that states (paragraph
2), “milling the seeds into flour does not make the genome go away.” While the
genome may not “go away” it may be mechanically disrupted so that it is
structurally/biochemically indistinguishable from that of the prior art. We note
that “[w]here a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden is
upon the applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product. In re Best, 562
F.2d [1252,] 1255, 195 USPQ [430,] 433[ (CCPA 1977)].” In re Marosi, 710 F.2d
799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983).
On this record, however, the examiner has not made a sufficient finding of
fact that the milling process will mechanically disrupt the seeds genome.
Instead, the examiner merely concludes that the genome will be destroyed (see
Answer, page 5) without providing any evidence to support this position.
Accordingly, we remand this application to the examiner to reconsider this
rejection and to determine if in fact the milling process will mechanically disrupt
the genome of the seed so that the claimed wheat flour is genetically
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