Appeal No. 2004-1259
Application No. 09/832,355
ordinary skill in art to find an invention unpatentable, since the factual questions are
material to patentability, and cannot be resolved on subjective belief and unknown
authority. Id.
The examiner has failed to put forth evidence indicating that one of ordinary skill
in the art would have understood that TNF alpha, TGF beta and IGF do not possess
angiogenic properties, especially in view of appellants' statements in the specification
and reference to patents and publications in the specification to the contrary. Nor has
the examiner provided appropriate evidence to support her position that the bone
growth promoting peptides referenced in the specification would not have possessed
the functions indicated therein. It is not appellants' burden to bring forth such evidence
until the examiner establishes a prima facie case of lack of enablement.
Finally, the examiner’s suggestion of the possible existence of non-operational
embodiments within the scope of the claims does not necessarily mean the claims are
unpatentable. Texas Instruments v. U.S. International Trade Commission, 805 F.2d
1558, 1562, 231 USPQ 833, 835 (Fed. Cir 1986). “Even if some of the claimed
combinations were inoperative, the claims are not necessarily invalid... . [I]f the number
of inoperative combinations becomes significant, and in effect forces one of ordinary
skill in the art to experiment unduly in order to practice the claimed invention, the claims
might indeed be invalid.” EMI Group North America Inc. v. Cypress Semiconductor
Corp., 60 USPQ2d 1423 (CA FC 2001); Atlas Powder Co. v. E.I. Du Pont De Nemours
& Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414(Fed. Cir. 1984). The examiner
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