DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the amendment filed on November 13, 2025. Claims 14-18 are currently pending and are under examination.
Withdrawal of Rejections
The rejection of claims 14-18 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter is withdrawn based on the amendment to claim 14 to refer to the length of contracted artificial fibroin fiber is a length measured after the artificial fibroin fiber is brought into contact with water after spinning to produce contracted artificial fibroin fiber.
Pending Rejections
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,174,572 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are of overlapping scope. The claims of the U.S. Patent disclose a modified fibroin-derived protein that has overlapping structure. The fibroin-derived protein is selected from: (i) a natural fibroin-derived protein; and/or (ii) a modified fibroin-derived protein. The natural fibroin-derived protein is at least one selected from the group consisting of a silk fibroin-derived silk protein (silk fibroin protein), a spider thread fibroin-derived spider thread protein (spider thread fibroin protein) and a hornet silk fibroin-derived hornet silk protein. The modified fibroin-derived protein is a modified fibroin-derived protein having a domain sequence represented by the following formula (I): [(A).sub.m motif-REP].sub.m (I), wherein as compared to a naturally derived fibroin, at least one or a plurality of the glycine residues in REP are substituted with a different amino acid residue(s), and the domain sequence has an amino acid sequence with a reduced content of glycine residues, in the in the (A)n motif, (A) represents an amino acid residue, n represents an integer of 8 to 20, and the number of alanine residues relative to a total number of the amino acid residues in the (A).sub.n motif is 40% or more; and wherein the ratio of the number of alanine residues/the total number of the amino acid residues in the (A)n motif becomes maximum in the calculation; REP represents an amino acid sequence consisting of 2 to 200 amino acid residues; m represents an integer of 2 to 300; the plurality of (A).sub.n motifs may be the same amino acid sequences or different amino acid sequences; and the plurality of REPs may be the same amino acid sequences or different amino acid sequences (see particularly claims 7-10).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Response to Arguments
Applicant’s remarks state that U.S. Patent 11,174,572 is silent regarding any contraction percentage or post-spinning shrinkage behavior of the resulting fiber. Applicant’s state the present amended claims highly contracted artificial fibroin fiber- defined by a specific contraction percentage measured after controlled hydration and represents a distinct and nonobvious improvement over ‘572 patent. Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claims 14-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 11-17, and 22 of U.S. Patent No. 11,692,015 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are of overlapping scope. The claims of the U.S. Patent disclose a modified fibroin-derived protein that has overlapping structure. A modified fibroin, comprising: a domain sequence represented by Formula 1: [(A).sub.n motif-REP].sub.m or Formula 2: [(A).sub.n motif-REP].sub.m−(A).sub.n motif, wherein the domain sequence has an amino acid sequence equivalent with a reduced content of a glutamine residue to an amino acid in which one or a plurality of glutamine residues in REP are deleted or substituted with other amino acid residues, as compared with a naturally occurring fibroin wherein in Formula 1 and Formula 2, (A).sub.n motif represents an amino acid sequence consisting of 4 to 27 amino acid residues and the number of alanine residues with respect to the total number of amino acid residues in the (A).sub.n motif is 80% or more, REP represents an amino acid sequence consisting of 10 to 200 amino acid residues and contains a GPGXX (where X represents an amino acid residue other than a glycine residue) motif and has a GPGXX motif content of 10% or more, wherein an increase in the GPGXX motif content increases tensile strength and elasticity, m represents an integer of 10 to 300, a plurality of (A).sub.n motifs may be the same amino acid sequence or different amino acid sequences, and a plurality of REPs may be the same amino acid sequence or different amino acid sequences (see claims 1-9, 11-17, and 22).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Response to Arguments
Applicant’s remarks state that U.S. Patent 11,692,015 disclose or suggest fibroins containing GGX motifs. Applicant’s state the claimed fibroin exhibits recurring Gly-Gly-X tripeptide units that generate a distinct backbone architecture and an altered distribution of glycine residues. This modification materially affects chain flexibility and hydrogen-bonding patterns, producing a domain organization not contemplated by the earlier patents. Applicant’s state the present amended claims are patently distinct over U.S. Patent 11,692,015. Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive. Applicant’s state in the remarks that reference patent does describe fibroins dominated by GPGXX pentapeptide repeats (e.g. GPGGY, GPGGP) and alanine-rich segments. GGY and GGP are encompassed by the structural limitations of GGX motifs as currently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claims 14-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 16-20 of U.S. Patent No. 12,195,883 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are of overlapping scope. The claims of the U.S. Patent disclose a modified fibroin-derived protein that has overlapping structure. A modified fibroin fiber having a shrinkage history of being irreversibly shrunk after spinning, the modified fibroin fiber comprising modified fibroin, wherein a fiber diameter of a raw material fiber before being irreversibly shrunk is from 55 to 100 μm, wherein the modified fibroin comprises a domain sequence represented by Formula 1: [(A).sub.n motif-REP].sub.m or Formula 2: [(A).sub.n motif-REP].sub.m-(A).sub.n motif, in which: (A).sub.n motif represents an amino acid sequence consisting of 2 to 27 amino acid residues, and a proportion of the number of alanine residues to a total number of amino acid residues in the (A).sub.n motif is 40% or more; REP represents an amino acid sequence consisting of 2 to 200 amino acid residues; and m represents an integer from 2 to 300, wherein a plurality of (A), motifs is the same amino acid sequences or different amino acid sequences, wherein a plurality of REP is the same amino acid sequences or different amino acid sequences, and wherein the domain sequence has an amino acid sequence corresponding to deletion of one or a plurality of glutamine residues in REP or substitution of one or a plurality of glutamine residues with another amino acid residue, as compared with the naturally derived fibroin (see claims 1-8 and 16-20).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Response to Arguments
Applicant’s remarks state that U.S. Patent 12,195,883 and the present application are directed to fundamentally different inventions that address opposite technical problems. Applicant’s state the opposite design goals and resulting behaviors of the ‘883 disclosure, the pending claimed invention could not have been obvious over the teachings of U.S. Patent 12,195,883. Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive. The modified fibroin in U.S. Patent 12,195,883 comprises a domain sequence represented by Formula 1: [(A).sub.n motif-REP].sub.m or Formula 2: [(A).sub.n motif-REP].sub.m-(A).sub.n motif, in which: (A).sub.n motif represents an amino acid sequence consisting of 2 to 27 amino acid residues, and a proportion of the number of alanine residues to a total number of amino acid residues in the (A).sub.n motif is 40% or more; REP represents an amino acid sequence consisting of 2 to 200 amino acid residues; and m represents an integer from 2 to 300, wherein a plurality of (A), motifs is the same amino acid sequences or different amino acid sequences, wherein a plurality of REP is the same amino acid sequences or different amino acid sequences, and wherein the domain sequence has an amino acid sequence corresponding to deletion of one or a plurality of glutamine residues in REP or substitution of one or a plurality of glutamine residues with another amino acid residue, as compared with the naturally derived fibroin (see claims 1-8 and 16-20).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claims 14-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 15-19 of U.S. Patent No. 12,319,718 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are of overlapping scope. The claims of the U.S. Patent disclose a modified fibroin-derived protein that has overlapping structure. A modified fibroin comprising a domain sequence represented by Formula 1: [(A).sub.n motif-REP].sub.m or Formula 2: [(A).sub.n motif-REP].sub.m-(A).sub.n motif, wherein a serine residue content rate is less than 5.5%, and wherein: in Formula 1 and Formula 2, the (A).sub.n motif represents an amino acid sequence consisting of 4 to 27 amino acid residues and the number of alanine residues with respect to the total number of amino acid residues in the (A).sub.n motif is 80% or more, REP represents an amino acid sequence consisting of 10 to 200 amino acid residues, m represents an integer of 10 to 300, the plurality of (A).sub.n motifs may be the same amino acid sequence or different amino acid sequences, and the plurality of REPs may be the same amino acid sequence or different amino acid sequences (see claims 1-7 and 15-19).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Response to Arguments
Applicant’s remarks state that U.S. Patent 12,319,718 is silent regarding any contraction percentage of the fiber. Applicant’s state the present amended claims highly contracted artificial fibroin fiber- defined by a specific contraction percentage measured after contact with water - represents a distinct and nonobvious improvement over ‘718 patent. Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
The claims of the U.S. Patent disclose a modified fibroin-derived protein that has overlapping structure. A modified fibroin comprising a domain sequence represented by Formula 1: [(A).sub.n motif-REP].sub.m or Formula 2: [(A).sub.n motif-REP].sub.m-(A).sub.n motif, wherein a serine residue content rate is less than 5.5%, and wherein: in Formula 1 and Formula 2, the (A).sub.n motif represents an amino acid sequence consisting of 4 to 27 amino acid residues and the number of alanine residues with respect to the total number of amino acid residues in the (A).sub.n motif is 80% or more, REP represents an amino acid sequence consisting of 10 to 200 amino acid residues, m represents an integer of 10 to 300, the plurality of (A).sub.n motifs may be the same amino acid sequence or different amino acid sequences, and the plurality of REPs may be the same amino acid sequence or different amino acid sequences (see claims 1-7 and 15-19).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 14-17 stand rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Klein et al. (WO 2018/087239 A1; 4/25/2024 IDS Foreign Patent Document #2).
Klein et al. discloses a recombinant (ie. synthetically produced) silk polypeptide fiber which is shrunk (i.e. contracted) by contact with water (see page 8, lines 27 to 30, page 51, items 1 and 3, and page 53, items 16 to 20 of the description as well as examples). The term “fibroin” as defined in US 18/482,262 also includes silk polypeptides (see paragraph [0064] of the description of US 18/482,262). Thus, Klein et al. discloses a synthetically produced fibroin fiber as required by pending independent claim 14. Preferably, the recombinant silk polypeptide fiber described in Klein et al. comprises C modules as repetitive units. C modules are derived from the spider silk polypeptide ADF-4, but differ in their sequence from the corresponding naturally occurring sequence. A preferred fiber described in and used in the examples comprises the recombinant silk polypeptides C32 or C32NR4 (see page 53, items 16 to 20 of the description as well as examples). The term “modified fibroin” as defined in US 18/482,262 encompasses a synthetically produced fibroin (an artificial fibroin). The modified fibroin may be a fibroin whose domain sequence is different from the amino acid sequence of naturally occurring fibroin, or may be a fibroin whose amino acid sequence is the same as that of naturally occurring fibroin (see paragraphs [0054] and [0055] of the description of US 18/482,262).
Thus, Klein et al. discloses an artificial spider silk polypeptide fiber comprising modified fibroin as required by pending independent claim 14. The modified fibroin referred to in pending independent claim 14 is a protein including a domain sequence represented by Formula: [(A)n motif-REP]m. As mentioned above, Klein et al. discloses the recombinant silk polypeptides C32 or C32NR4. The recombinant silk polypeptides C32 or C32NR4 are composed of 32 C modules (see page 23). The C module itself has the structure [(A)n motif-REP]. In detail, the C module has the following amino acid sequence: GSSAAAAAAAASGPGGYGPENOGPSGPGGYGPGGP, wherein GSSAAAAAAAA represents the (A)n motif, and SGPGGY GPENQGPSGPGGYGPGGP represents REP. The sequence GSSAAAAAAAA, which represents the (A)n motif, is 11 amino acids long (i.e. n = 11). It, thus, falls within the required range of between “2 to 20” amino acid residues. In addition, the sequence GSSAAAAAAAA, which represents the (A)n motif, comprises 8 alanine residues. Thus, the percentage of alanine residues in this sequence is about 73%. This value falls within the required range of “40% or more”. The sequence SGPGGY GPENOGPSGPGGY GPGGP, which represents the REP domain, is 24 amino acids long and, thus, falls within the required range of “2 to 200”. The C module with the sequence GSSAAAAAAAASGPGGY GPENQGPSGPGGY GPGGP is 32 times comprised in the recombinant silk polypeptides C32 or C32NR4 (i.e. m = 32). Thus, the feature of “2 to 300” is fulfilled. The (A)n motifs (GSSAAAAAAAA) in the recombinant silk polypeptides C32 or C32NR4 have the same amino acid sequence and the REPs (SGPGGYGPENQGPSGPGGY GPGGP) in the recombinant silk polypeptides C32 or C3: NR4 have the same amino acid sequence as required in pending independent claim 14. Klein et al. further describes that the spider silk polypeptide fiber shows a shrinkage (i.e. contraction) of at least 10% with regard to its total length after first contact with water as solvent (see page 25, lines 7 to 12 as well es examples). Preferably, the recombinant spider silk polypeptide fiber shows a shrinkage (i.e. contraction) of at least 15%, more preferably of at least 25%, even more preferably of at least 35%, with regard to the total length of said fiber (see page 25, lines 7 to 12 as well as examples). Thus, the feature of 12.5% or more is fulfilled. Accordingly, all features of pending independent claim 14 are described in Klein et al.
Klein et al. also describes the feature of claim 15 as it discloses a recombinant (i.e. synthetically produced) spider silk polypeptide fiber which is shrunk (i.e. contracted) by contact with water (see page 8, lines 27 to 30, page 51, items 1 and 3, and page 53, items 16 to 20 of the description as well as examples).
Klein et al. describe the feature of claim 16 as it discloses that the shrinkage is preferably carried out at a water temperature of between 8 and 35°C (see page 13, lines 15 to 23 of the description as well as examples). This is below the boiling point of water. Klein et al. also describes the feature of claim 16 as it discloses that the shrinkage is preferably carried out at a temperature of between 8 and 35°C (see page 13, lines 15 to 23 of the description as well as examples). At least the value of 35°C lies within the range of between 10°C to 90°C, which reads on claim 17.
Response to Arguments
Applicant’s remarks state that claim 14 is amended to further clarify that “the modified fibroin is expressed in a prokaryotic cell.” This limitation was added to more precisely define the recombinant production system used to obtain the claimed modified fibroin. Klein et al. does not disclose, teach, or suggest expression of the fibroin in any prokaryotic host. Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
Applicant is referred to MPEP 2113 Product-by-Process Claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a 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.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Conclusion
All references have been previously cited.
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655