Appeal No. 2001-1498 Page 4
Application No. 08/912,378
However, as set forth in Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997), “[u]nder 35 U.S.C. Section 102, every limitation of a
claim must identically appear in a single prior art reference for it to anticipate the
claim.” In this regard, the examiner failed to establish that the macrocycle
component of the composition is present in an amount effective to enhance
delivery of the nucleic acid to bacterial cells, as is required by the claimed
invention.
In our opinion, the examiner’s suggestion that any nucleic acid or
derivative thereof can be used together with porphyrin for delivery to bacterial
cells is not a reasonable basis to shift the burden to appellants to demonstrate
that the effective amount required by the claimed invention is the same as that in
the prior art. We are mindful that there is a line of cases represented by In re
Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971) which
indicates that where an examiner has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art, the examiner
possesses the authority to require an applicant to prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.
Nevertheless, before an applicant can be put to this burdensome task, the
examiner must provide some evidence or scientific reasoning to establish the
reasonableness of the examiner's belief that the functional limitation is an
inherent characteristic of the prior art. In the case before us, no such evidence
or reasoning has been set forward.
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