Appeal No. 2004-1346 Page 5
Application No. 08/971,338
biological properties of GDF-1 both under normal physiological conditions and
during disease states.”
DISCUSSION
Utility:
According to appellant (Brief, page 6), “[c]laims 4-10 and 22-33 may be
considered together with regard to the utility and enablement (how to use)
arguments.” We understand this statement to mean that claims 4-10 and 22-33
stand or fall together. Since all claims stand or fall together, we limit our
discussion to representative independent claim 9. Claims 4-8, 10 and 22-33 will
stand or fall together with claim 9. In re Young, 927 F.2d 588, 590, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991).
The examiner bears the initial burden of showing that a claimed invention
lacks patentable utility. See In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436,
1441 (Fed. Cir. 1995) (“Only after the PTO provides evidence showing that one
of ordinary skill in the art would reasonably doubt the asserted utility does the
burden shift to the applicant to provide rebuttal evidence sufficient to convince
such a person of the invention’s asserted utility.”). In our opinion, the examiner
has met her burden of showing that the claimed invention lacks patentable utility,
and we adopt the examiner’s reasoning as our own. The remainder of our
discussion serves to emphasize the evidentiary basis supporting our decision to
affirm the examiner.
The seminal decision interpreting the utility requirement of § 101 is
Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966). At issue in Brenner
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