Ex Parte Lal et al - Page 8

                  Appeal 2007-2517                                                                                         
                  Application 10/311,196                                                                                   
                  utility for the claimed invention.  “Enablement, or utility, is determined as of                         
                  the application filing date.”  Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at                                 
                  1442 n.19.                                                                                               
                         Li was published in 2002, after the instant application was filed.                                
                  Consequently, it cannot be used to determine whether the claimed invention                               
                  had a utility as of the filing date.  Appellants have provided no evidence that                          
                  the content disclosed by Li in 2002 was available to those skilled in the art                            
                  before the filing date of the instant application.  Therefore, Li’s disclosure                           
                  that T1R3 is a human taste receptor cannot be relied on to show the utility of                           
                  the polypeptide comprising SEQ ID NO: 2.  Montmayeur was also published                                  
                  after the filing date; for the same reason, it also cannot be relied upon to                             
                  establish utility of the claimed invention.                                                              
                         Appellants’ contend that Brana holds that “[a] declaration, though                                
                  dated after applicants’ filing date, can be used to substantiate any doubts as                           
                  to the asserted utility since this pertains to the accuracy of a statement                               
                  already in the specification.” (Reply Br. 4).  However, in this case, the issue                          
                  is whether there is a statement in the Specification of an asserted utility, not                         
                  the accuracy of a statement as in Brana.                                                                 
                         For the reasons described above, we affirm the rejection of claim 1 for                           
                  lack of utility.  Claims 2-7, 9, 11, 16, and 17 fall with claim 1 because they                           
                  were not separately argued.                                                                              
                  “How to use” rejection                                                                                   
                         Claims 1-7, 9, 11, 16, and 17 are also rejected under 35 U.S.C. § 112,                            
                  first paragraph, for failing to teach how to use the claimed invention                                   
                  (Answer 6).  If a claim fails to meet the utility requirement of 35 U.S.C. §                             
                  101 because it is not useful, then it necessarily fails to meet the how-to-use                           

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