Appeal 2007-0539
Application 10/264,026
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.” In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Likewise, “[w]here
a product-by-process claim is rejected over a prior art product that appears to
be identical, although produced by a different process, the burden is upon
the applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.” In re
Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983).
Shifting the burden under these circumstances is reasonable because of “the
PTO’s inability to manufacture products or to obtain and compare prior art
products.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977).
The issue raised by this appeal, then, is whether the Examiner has
provided a reasonable basis for shifting the burden to Appellants to establish
that the prior art pseudopterosin compositions do not contain pseudopterosin
compounds obtainable from Symbiodinium spp., and/or that the prior art
compositions contain animal impurities.
We find that the references cited by the examiner describe
pseudopterosin compositions containing pseudopterosin compounds, and
synthetic derivatives thereof, of the same classes obtained from
Symbiodinium spp. Moreover, because the pseudopterosin compounds were
isolated and purified before being incorporated into compositions, we find
that the Examiner has established a reasonable basis for concluding that the
prior art compositions are free of animal impurities. Therefore, we find that
the Examiner has provided a reasonable basis for shifting the burden to
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