Appeal No. 2006-1608 Page 7
Application No. 09/978,593
to “usefulness”, the rejection on appeal was for nonenablement. See id. at 1564,
34 USPQ2d at 1439.)
Therefore, as the examiner has failed to set forth a prima facie case of
unpatentability under 35 U.S.C. § 112, first paragraph, we are compelled to
reverse the rejection.
Claims 20 and 31 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by El-Said.
According to the rejection,
El-Said [ ] disclose[s] that an aqueous extract of O.
gratissimum has been used in Nigerian herbal medicine for the
treatment of fevers (see abstract). Fever is a symptom that is
associated with viral or bacterial infections (as evidenced by . . .
Merck . . .). Thus, the treatment of viral infection using an extract of
O. gratissimum is anticipated by El-Said [ ].
Examiner’s Answer, page 7.
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996). In order for a prior art reference to serve as an anticipatory
reference, it must disclose every limitation of the claimed invention, either
explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1432 (Fed. Cir. 1997).
Appellant argues that El-Said “disclose[s] the chemotaxonomy and
antibacterial testing of Ocimum gratissimum specimens.” Appeal Brief, page 11
(emphasis in original). Therefore, according to appellant, “[t]he invention, as
claimed, is not anticipated by [El-Said] because the reference does not disclose
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