Appeal No. 2003-1792
Application No. 09/434,598
set which may be further used to analyze RNA.
With respect to appellants’ argument that not all of the EGSs of Shaji [George]
are “targeted to all or a substantial number of the accessible sites in the RNA molecule
of interest” in our view the examiner has provided a reasonable analysis in the Answer
as to why one of ordinary skill in the art would have understood the EGS of George are
directed to a substantial number of accessible sites in the RNA molecule of interest.
The examiner finds that the “specification and applicant[s'] arguments fail to provide
what specifically constitutes a substantial number...” Answer, page 6. We agree and
therefore attribute the ordinary meaning to the term “substantial” in the claims. 2 In
addition, under such circumstances, the PTO can require an applicant to establish that
a prior art product does not necessarily possess the characteristics of the claimed
product when the prior art and claimed products are identical or substantially identical.
See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). While
"indirect comparisons, based on established scientific principles, can validly be applied
to distinguish a claimed chemical process or product from that disclosed in the prior
art," In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 432 (CCPA 1977), the
comparisons must be scientifically valid.
Appellants' burden under the circumstances presented herein was described in
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977) as follows:
2 The term “substantial” is defined in Miriam Websters on-line dictionary as “being largely but not
wholly that which is specified.”
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