Appeal No. 94-3359
Application 07/941,566
not enabled by appellants' disclosure because the term "`alkali'
has been considered as an element such as lithium, sodium or
potassium as broadly claimed and as originally disclosed in the
claims." (page 5 of the answer).
The question of whether or not a claimed invention
lacks utility is a question of fact. Raytheon Co. v. Roper Corp.,
724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983). A
deficiency under 35 USC 101 also creates a deficiency under 35
112, first paragraph. However, the alleged deficiency under 35
USC 101 must be accompanied by the factual showing necessary to
establish a prima facie case for lack of utility. Here the
examiner has simply speculated as to whether or not certain
polymers bearing the claimed pendant dihydroxy phenyl group would
have been expected to have the utility which appellants assert
they possess. There is certainly no evidence which establishes
that polymers having a molecular weight of "millions or hundred
millions" and bearing the claimed dihydroxy phenyl moieties do
not have the utility which appellants state they possess.
Moreover, assuming the claims do embrace some inoperative
embodiments, it is not the function of the claims to specifically
exclude all possible inoperative substances or ineffective
amounts and proportions. In re Dinh-Nguyen, 492 F.2d 856, 858-
859, 181 USPQ 46, 48 (CCPA 1974). Accordingly, we reverse the
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