Appeal No. 2001-2646 Page 9
Application No. 08/463,951
that it is not. Pointing out a lack of independent evidentiary support is not
enough to carry that burden. “[I]t is incumbent upon the Patent Office, whenever
a rejection on this basis is made, to explain why it doubts the truth or accuracy of
any statement in a supporting disclosure and to back up assertions of its own
with acceptable evidence or reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively accurate disclosure.”
Marzocchi, 439 F.2d at 224, 169 USPQ at 370.
Finally, regardless of what was said in the Board decisions cited by
examiner, treatment claims do not necessarily require a showing of in vivo
efficacy to be enabled. See, e.g., Cross v. Iizuka, 753 F.2d 1040, 1051, 224
USPQ 739, 748 (Fed. Cir. 1985).
2. Obviousness-type double patenting
The examiner rejected some of the claims for obviousness-type double
patenting, on the basis that they are directed to a genus that encompasses the
species claimed in U.S. Patent 5,530,009. See the Examiner’s Answer, pages
12-13.
Appellants concede that the ‘009 patent “claims a single, specific
crystalline species . . . that is covered generically in the subject application.”
Appeal Brief, page 11. They argue, however, that a rejection for obviousness-
type double patenting is not warranted because the application that matured into
the ‘009 patent was filed after (the effective filing date of) the instant application,
even though it issued first. Appellants cite In re Braat, 937 F.2d 589, 19 USPQ2d
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007