Appeal No. 2002-0534 Page 10
Application No. 08/551,326
that the reference’s phosphatidylserine was cortex-derived rather than soy-
derived.
It is unclear whether this difference distinguishes the claimed method from
the method disclosed in the prior art. On the one hand, a preparation derived
from bovine brains may well have a different composition than a preparation
derived from soybeans, even if the main component of each preparation is
phosphatidylserine. On the other hand, phosphatidylserine is
phosphatidylserine, regardless of where it’s from, and the instant specification
indicates that “soy-derived phosphatidylserine (SDPS) has clinically the same
properties as the prohibitively expensive, brain-cortex derived phosphatidylserine
(BDPS) in its anti-catabolic effect.” Page 7.
Upon return of this case, the examiner should consider whether the
evidence of record is sufficient to conclude that the prior art process is the same
as the process defined by claim 25. If so, the examiner could properly reject
claim 25 (and possibly other claims as well) as anticipated, and shift the burden
to Appellant to show a difference between the claimed process and the known
one. See, e.g., In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
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