Appeal No. 2006-2194 Page 4
Application No. 09/866,925
VACATUR AND REMAND
The board serves as a board of review, not a de novo examination
tribunal. See 35 U.S.C. § 6(b) (“The [board] shall, on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents.”). The burden is on the examiner to set forth a prima facie case of
nonpatentability. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996).
Claims 20-37, all of the claims on appeal, stand rejected under 35 U.S.C.
§ 112, first paragraph, as containing subject matter that was not described in the
specification in such a way as to enable one skilled in the art to which it pertains,
or with which it is most nearly connected, to make and/or use the invention.
The rejection is set forth on pages 3-5 of the Examiner’s Answer, but it
suffers from several deficiencies.
First, there are eight independent claims, each having different limitations.
For example, claim 21 requires “detecting, by computer, changes in connectron
behavior in the genome as a function of changes in the sequence of the
genome.” The rejection, however, does not address the limitations of all of the
independent claims, nor does it address the limitations of dependent claims 37.
Second, the rejection appears to address limitations that do not seem to
appear in the claims. The examiner focuses on the issue that “[i]n order to
practice the claimed invention one of skill in the art must identify and use a
connectron to predict regulation of gene expression.” Examiner’s Answer, page
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