Appeal No. 96-0009
Application 08/104,417
neurotransmitter is capable of binding a transporter which
binds L-glutamate.
THE REJECTION
Claims 1-4 and 22-24 stand rejected under 35 U.S.C. § 101
on the ground that the claimed invention lacks utility.
OPINION
We have carefully considered all of the arguments
advanced by appellants and the examiner and agree with
appellants that the aforementioned rejection is not well
founded. This rejection therefore will be reversed.
In parent Application 07/427,235, the examiner rejected
claims 1-4 and 22-24 under both 35 U.S.C. § 101 (lack of
utility) and 35 U.S.C. § 112, first paragraph (nonenablement)
(paper no. 20). In the present application, the only
rejection is under 35 U.S.C. § 101 (lack of utility). The
examiner, however, presents arguments directed toward lack of
enablement (answer, pages 3, 6 and 7) and appellants argue
that the claimed invention is enabled (brief, pages 9-14).
For this reason and because absence of utility can be the
basis of a rejection under both 35 U.S.C. § 101 and 35 U.S.C.
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