Appeal No. 2004-1259
Application No. 09/832,355
the cytokines specifically recited in the specification as having such activity do not have
either activity, the written description and enablement in the specification do not support
the breadth of the claims.” Answer, page 18.
The examiner's rebuttal position fails for several reasons. First, the examiner
has failed to consider and address appellants' argument concerning the specification's
disclosure of a representative number of species to support the entire genus. Next, we
find no evidence of record provided by the examiner which supports the position of the
examiner that cytokines such as TNF alpha, TGF beta and IGF do not possess
angiogenic properties as set forth in appellants' specification. Bone growth promoting
substances are referenced in the specification at pages 33-34, paragraphs [0073-0075].
The examiner has the burden in the first instance to put forth evidence of lack of
enablement.
Patent examiners, in relying on what they assert to be general knowledge to
negate patentability, must articulate that knowledge and place it of record, since
examiners are presumed to act from the viewpoint of a person of ordinary skill in the art
in finding relevant facts, assessing the significance of the evidence, and making the
ultimate determination. Failure to do so is not consistent with either effective
administrative procedure or effective judicial review, examiners cannot rely on
conclusory statements, but must set forth the rationale on which they rely. See In re
Lee, 277 F.3d 1338, 1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). Thus,
it is improper to rely on the “common knowledge and common sense” of a person of
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