Appeal No. 95-1364
Application No. 07/919,287
The rejections under 35 U.S.C. § 101
With respect to the so called utility requirement of 35 U.S.C. § 101, the CCPA has described the
requirements for establishing a prima facie case of lack of utility:
As a matter of Patent Office practice, a specification which contains a
disclosure of utility which corresponds in scope to the subject matter sought to be
patented must be taken as sufficient to satisfy the utility requirement of § 101 for
the entire claimed subject matter unless there is reason for one skilled in the art to
question the objective truth of the statement of utility or its scope. Assuming that
sufficient reason to question the statement of utility and its scope does exist, a
rejection for lack of utility under § 101 will be proper on that basis; such a
rejection can be overcome by suitable proofs indicating that the statement of utility
and its scope as found in the specification are true. [Emphasis added.]
In re Langer, 503 F.2d 1380, 1391-92, 183 USPQ 288, 297 (CCPA 1974).
Rejection of claims 1, 5-6, 8-9, 14-16, 26-27 and 31-36
There is no assertion raised that the utility disclosed in the specification fails to correspond to the
scope of the claimed subject matter. Indeed, the specification expressly states the utility as “treating a viral
condition caused by an enveloped virus.” Specification, p. 4, lines 21-22. This is the same utility as set
forth in the claims. Thus, the stated utility must be considered sufficient unless the examiner presents
evidence and reasoning which would give one having ordinary skill in the art reason to doubt the objective
truth of the application’s statement of utility.
The examiner correctly notes that many of the claims read on treating AIDS. The examiner asserts
that “[t]reatment efforts, and efforts to cure this group of related symptoms have produced no identifiable
positive results.” Examiner’s answer, p. 3. However, the examiner has not provided any evidence which
supports this assertion. The examiner’s reliance on Ex parte Balzarini, 21 USPQ2d 1892 (Bd. Pat. App.
& Interferences 1991), a non-precedential opinion of this board, does not help the examiner’s position.
In Balzarini the examiner provided ample evidence to support the position that those skilled in the art would
not believe that successful in vitro testing would be a reasonable basis for predicting in vivo efficacy. This
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