Appeal No. 95-0371
Application 07/965,304
1 through 12 also stand rejected under 35 U.S.C. § 103 as unpatentable over the
Chemical Abstracts citation of Priebe in view of Paulson. We reverse the non prior art
rejections and vacate the prior art rejections. In addition, we remand the application for the
examiner to consider other issues.
DISCUSSION
1. Utility
The sole reason given by the examiner for rejecting claim 7 under 35 U.S.C.
§ 101 is set forth in the paragraph bridging pages 3-4 of the examiner’s answer and reads
as follows:
“[t]he claim reads on effecting physiological precesses [sic] that are
not directly related to any disease pathology.”
Suffice it to say that we have no idea what the examiner means by this statement.
Furthermore, the examiner cites at page 4 of the examiner’s answer in support of
this rejection the following case “Splendor form Brassiere, Inc. v. Rapid-American Corp.,
187 USPQ 158 (CCPA 1975).” Turning to that volume and page, we find no such case.
However, a case styled in the manner stated by the examiner is found at
187 USPQ 151. The decision reported therein is that of a United States District Court, not
the Court of Customs Patent Appeals as stated by the examiner. In that case, the district
court raised on its own motion a question of utility under 35 U.S.C. § 101 stating,
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