Appeal 2007-1149
Application 10/066,273
induced angiogenesis would be beneficial including, for example, wound
healing” (Specification 142).
Section 101 requires a utility that is both substantial and specific. A
substantial utility requires “show[ing] that an invention is useful to the
public as disclosed in its current form, not that it may prove useful at some
future date after further research. Simply put, to satisfy the ‘substantial’
utility requirement, an asserted use must show that that claimed invention
has a significant and presently available benefit to the public.” In re Fisher,
421 F.3d 1365, 1371, 76 USPQ2d 1225, 1230 (Fed. Cir. 2005). A specific
utility is “a use which is not so vague as to be meaningless.” Id. In other
words, “in addition to providing a ‘substantial’ utility, an asserted use must
also show that [the] claimed invention can be used to provide a well-defined
and particular benefit to the public.” Id.
“[T]he PTO has the initial burden of challenging a presumptively
correct assertion of utility in the disclosure. 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 re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441
(Fed. Cir. 1995) (citation omitted).
In this case, we agree with Appellants that the Examiner has not
provided a sufficient basis to challenge the Specification’s assertion of
utility. We agree with the Examiner that the art demonstrates that a variety
of stimuli may activate c-fos and that not all of these stimuli are necessarily
involved in cancer or pathogenic angiogenesis. In particular, it is not clear
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