Appeal No. 2002-1367 Page 15
Application No. 08/981,964
Granted, Servouse does not show definitively that ACoAT is regulated at
the level of transcription. That, however, is not required. Proving a fact by a
preponderance of the evidence requires only “evidence which is of greater weight
or more convincing than the evidence which is offered in opposition to it; that is,
evidence which as a whole shows that the fact sought to be proved is more
probable than not.” Black’s Law Dictionary, 6th edition (1990).
Here, there are apparently only two possible mechanisms of regulation to
distinguish between, and Servouse provides evidence that those skilled in the art
considered transcriptional regulation to be more likely than translational
regulation. Thus, in my view, Servouse provides sufficient evidence to show that
those of skill in the art would have expected ACoAT expression to be, more likely
than not, regulated at the level of transcription. I believe the examiner’s rejection
is supported by a preponderance of the evidence.
My colleagues on this panel conclude that the examiner has not made out
a prima facie case. I find it hard to fault the majority’s analysis, as far as it goes:
the examiner bears the initial burden of showing unpatentability by a
preponderance of the evidence; the examiner here did not provide the evidence
needed to support the rationale she relied on; therefore, the rejection as
presented on appeal does not show prima facie obviousness and we can in good
faith reverse it.
While there is nothing wrong with the majority’s analysis, I believe that in a
case like this one, where the evidence shows more than the examiner says, we
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