Appeal No. 2006-2861
Application No. 10/007,272
have been expected to contain even a single crystal of Form II, Form V, or
ethanol solvate of the known compound. While the burden of proof can be
shifted to an applicant in appropriate cases, the Office first must show a
reasonable basis for concluding that the claims read on the prior art. See In
re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970) (“[I]n an ex
parte proceeding to obtain a patent, . . . the Patent Office has the initial
burden of coming forward with some sort of evidence tending to disprove
novelty.”); In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not” (emphasis added).). No such basis has
been shown on this record.
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