Appeal No. 1999-2852
Application 08/681,898
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the declaration filed by the appellant, and to the
respected positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We will address the rejections of the claims under 35
U.S.C. § 112, first paragraph, and under 35 U.S.C. § 101
together. The lack of utility because of inoperativeness and
the absence of enablement are closely relative grounds of
unpatentability. Newman v. Quigg, 877 F.2d 1575, 1581, 11
USPQ2d 1340, 1345, (Fed. Cir. 1989), cert. denied, 495 U.S.
932 (1990). A rejection under 35 U.S.C. § 101 for lack of
utility is tantamount to a rejection under the how-to-use
provision of the enablement clause of the first paragraph of
35 U.S.C. § 112. In re Fouche, 439 F.2d 1237, 1243, 169 USPQ
429, 434 (CCPA 1971).
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