Appeal No. 2001-1725
Application 09/009,536
not.” (Examiner’s Answer, page 8, lines 1-3). We ask: Where in the record is this
supported by any evidence?4
The Examiner has also noted that the examples and comparative examples do
not distinguish between dehulled and dehypocotyl soybeans and soybeans which have
only been dehulled. However, the Examiner has the initial burden to put forth a proper
prima facie case of unpatentability. Only when that burden is met does the burden of
coming forward with evidence or argument shift to the applicant. In re Oetiker, 977 F.2d
1443, 24 USPQ2d 1443 (Fed. Cir. 1992). A conclusion of obviousness must be based
upon facts, not generality. Warner, 379 F.2d at 1017, 154 USPQ at 178; In re Freed,
425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970).
Finally, the Examiner has noted that the claims are put forth in a “Jepson-type”
format and therefore the invention begins at step 5. (Examiner’s Answer, page 8, lines
7-11). This is simply incorrect. A Jepson claim contains very specific language
(“wherein the improvement comprises”) and the preamble is intended to be limiting and
an admission of the prior art. The present claims are not in Jepson format.
4 The Examiner states in the Examiner’s Answer that the Appellants have conceded “that a prima facie
case of obviousness had been established” based upon a statement in the Advisory action referencing an
interview on October 18, 1999. We have reviewed the Examiner Interview Summary Record (Paper No.
9) and find no record of such an important admission contained therein.
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