Appeal No. 2001-2584 Page 10
Application No. 08/462,817
It appears, from this argument, that appellants’ are addressing the examiner’s
quotation from Clarke, explaining that in an appropriate case a single species
could be sufficient to antedate indirectly a different species of a reference. See
Reply Brief, page 9, “[a]ppellants submit that one need not provide every species
of the claimed invention by way of a 37 CFR [sic] § 1.131 Declaration….”
With regard to the examiner’s second argument (Answer, page 10),
reproduced above, the examiner is attempting to shift his burden to appellants to
“explain how the reduction to practice of an isolated cDNA encoding a human
glucocorticoid receptor would have rendered obvious the isolated cDNA
encoding the estrogen receptor of Green et al.” Appellants, however, explain
(Brief, page 11) that the glucocorticoid receptor is a species within the genus of
receptor proteins set forth in appellants’ claimed invention, as is (as the examiner
has found) the estrogen receptor. In our opinion, it is the examiner who has
failed to meet his burden, in the first instance, of establishing the facts necessary
to demonstrate that the evidence supplied by appellants is insufficient to
overcome the rejection.
Accordingly, we vacate this rejection and remand the application to the
examiner to first determine whether each claim in the pending application is
supported by and thereby entitled to benefit of the filing date of appellants’
06/922,585 application. After this determination is made, the examiner should
step back and consider the specification and prosecution history (including any
declarations provided by appellants), together with the relevant prior art. If the
examiner believes that a rejection is necessary, the examiner should issue an
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007