Appeal 2007-2225
Application 10/054,809
The allocation of burdens requires that the USPTO produce the factual
basis for its rejection of an application under 35 U.S.C. §§ 102 and 103. In
re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984)
(citing In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA
1967)). The one who bears the initial burden of presenting a prima facie
case of unpatentability is the examiner. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The Examiner has not provided copies in this appeal of the two
provisional applications in controversy, much less shown where any kind of
§ 112 support may be found in the provisional applications for the subject
matter of the published application upon which the rejection relies. In
accordance with the Examiner’s theory that some or all of the Teodosiu
published application may be applied against the instant claims, the rejection
should show, to establish a prima facie case for unpatentability, where § 112
support resides in the earlier provisional applications for each instance of
specific subject matter relied upon in the published application, including an
explanation why the provisionals would still be recognized by the artisan as
providing support if not “word for word” the same as the later text or
drawings. Mere reference to the text or drawings of Teodosiu is not
sufficient. The Teodosiu published application, by itself, shows no more
than the material published from the application that was filed in the USPTO
on September 13, 2001, which, according to this record, is later than the
effective filing date of each of the claims rejected.
Thus, even if we assume that a published application may have an
effective filing date as prior art based on earlier filed provisional
applications, the rejections that rely on Teodosiu fail to set forth a prima
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