Appeal No. 97-2776
Application No. 08/252,363
examiner. As a consequence of our review, we make the
determinations which follow.
The Utility Issue
We do not sustain the rejection of claims 24 through 29, 31
and 32 under 35 U.S.C. § 101 as lacking utility.
With regard to the statutory requirement of 35 U.S.C. § 101
that an invention be useful, a specification must contain a
disclosure of utility for the claimed invention. The initial
burden of establishing a prima facie case that a specification is
inadequate in this regard rests with the examiner and requires
presentation of a reason to doubt the asserted utility. As the
Federal Circuit stated in In re Brana, 51 F.3d 1560, 1566, 34
USPQ2d 1436, 1441, (Fed. Cir. 1995)(citations omitted):
From this it follows that the 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.
See also, In re Langer, 503 F.2d 1380, 1391-92, 183 USPQ 288, 297
(CCPA 1974).
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