Appeal No. 2003-1792
Application No. 09/434,598
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product. . . . Whether the rejection is based
on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under
35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO's inability to manufacture
products or to obtain and compare prior art products [footnote omitted].
In the present case we find that the examiner has presented sufficient argument
and evidence to support the position that the claimed affector molecules are the same
or substantially the same as the prior art 12 identified EGS. Thus, the burden shifts to
appellants to show that the prior art affector oligomers do not possess the claimed
characteristics of targeting a substantial number of sites on a target DNA and full
functionality. This appellants have not done.
Appellants also argue that only 12 of the 80 EGS induced in vitro cleavage and
that the claims are drawn to in vivo cleavage. Brief, page 9; Answer, page 6. The
examiner responds, noting that one would of ordinary skill in the art would have
expected all of the EGS to function in vivo as they were observed to function in vitro,
and that appellants' examples were also performed in vitro. Answer, page 6. We do
not find appellants have presented argument as to why one of ordinary skill in the art
would not have expected the results of in vitro testing of George to be correlated to
those of in vivo testing.
Furthermore, it is unclear from the record whether the appellants relied on the
product by process language set forth in claim 37 for patentability of the claim. To the
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