Appeal No. 2004-0005 Page 8
Application No. 07/644,361
the receptor, i.e., induce or not induce an increase in the phosphorylation of c-erbB-2
protein. Under these circumstances, it has been held that it is reasonable to shift the
burden to appellants to establish by way of objective evidence whether the antibodies
described in the Drebin references do or do not induce an increase in the
phosphorylation of c-erbB-2 protein. As stated in In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-434 (CCPA 1977)(footnote omitted):
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.
Viewed in light of this legal standard, appellants’ reliance upon Hudziak ‘692 is
best viewed as indirect evidence that the antibodies described in the Drebin references
may not possess the claimed activity. However, the relevance of Hudziak ‘692 in
considering whether the antibodies of the Drebin references do or do not possess the
claimed property is not seen. On this record, it is appropriate to shift the burden to
appellants to provide direct objective evidence in support of their assertion regarding the
properties possessed by the Drebin antibodies. For these reasons, the examiner’s
rejection is affirmed.
Other Issues
As discussed above, the central issue in this appeal is whether the antibodies
described in the Drebin references induce phosphorylation of the c-erbB-2 protein. We
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