Appeal No. 95-0371
Application 07/965,304
187 USPQ at 156: “if a patented invention fails to achieve the one advantage over the
prior art which the patent specification asserts for it, it can hardly be said to be ‘useful’ as
required by 35 U.S.C. § 101.” If in fact, this is the case the examiner intended to cite, it is
not at all clear what relevance it has to the subject matter and issues at hand.
We can only express our dismay that an examiner would forward such a rejection to
this board. The resources of this board and for that matter appellants should not have to
be spent in reviewing such work. By statute, this board serves as a board of review. 35
U.S.C. § 7 (b) (“The [board] shall . . . review adverse decisions of examiners upon
applications for patents . . . .”) In essence, the examiner has not presented a rejection
which is susceptible of a meaningful review.
The rejection of claim 7 is reversed.
2. Enablement
For reasons unclear from this record, the examiner only rejected claims 1, 4 and 5
as being non-enabled by the specification. From the reasons set forth for this rejection on
pages 4-5 of the examiner’s answer, it is not apparent why those reasons would not also
apply to the remaining claims on appeal.
Be that as it may, the examiner has failed to properly establish that one skilled in the
art would doubt the objective truth of the enabling statements set forth in the specification
of this application. This is the examiner’s initial burden. In re Marzocchi, 439 F.2d 220,
5
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