Appeal No. 2002-1972 Page 5
Application No. 09/394,722
under Section 101, the examiner has not, in our view, provided a detailed explanation
or evidence that one who is skilled in the art would consider the appellant’s position
regarding the utility of the emblem not to be credible, as is required by MPEP
§ 2107(C). We do not regard the examiner’s unsupported conclusion that “[t]he
connection between the object and the apprehension of the Tao is simply too abstract
to satisfy the requirements of 35 U.S.C. 101" as being sufficient to cause the burden of
proving utility to be shifted to the appellant. We also agree with the appellant that the
examiner’s reliance on State Street Bank and other similar cases that dealt with
mathematical algorithms to support the conclusion that utility is lacking in the present
situation is misplaced.
The rejection under Section 101 is not sustained.
The Rejection Under The First Paragraph Of Section 112
The examiner asserts in this rejection that the specification does not describe the
invention in such a manner as to enable one of ordinary skill in the art to which it
pertains, or with which it is most nearly connected, to make and/or use the invention
because the invention does not produce a concrete or tangible result and thus cannot
operate as intended without undue experimentation (Paper No. 11, page 2).
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