Appeal No. 2002-1254 Page 5
Application No. 09/411,381
applicant and the prior art are the same, the applicant has the burden of showing
that they are not.” In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658
(Fed. Cir. 1990).
In this case, we agree with the examiner that Latter’s disclosure was
sufficient to support a prima facie case of anticipation and to shift the burden to
Appellant to show a difference between the known and claimed products. We
disagree, however, with the weight the examiner gave to Appellant’s evidence.
The examiner argued that “[t]he cited prior art is a US patent and, thus, is
considered enabled for the particle size taught by said patent. Thus, applicant’s
argument of conventional methods can not [sic] be addressed by the examiner.”
Examiner’s Answer, page 4. The examiner was half-right, in that “a presumption
arises that both the claimed and unclaimed disclosures in a prior art patent are
enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, 65
USPQ2d 1385, 1416 (Fed. Cir. 2003). But that presumption is rebuttable. See
id.: “The applicant, however, can then overcome th[e] rejection by proving that
the relevant disclosures of the prior art patent are not enabled.”
In this case, Appellant submitted evidence showing that Latter was not
enabling for the atovaquone preparations that are presently claimed. In such a
case, just as with a rejection for obviousness, the examiner must start over and
re-weigh the evidence on both sides of the issue. Cf. In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976):
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over. . . . An
earlier decision should not . . . be considered as set in concrete,
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