Appeal No. 95-1364
Application No. 07/919,287
evidence included publications which were contemporaneous with and subsequent to Balzarini’s 1987 filing
date. Here the examiner has not provided any evidence to support the asserted lack of utility. The
Balzarini opinion itself cannot serve as relevant evidence as to how the asserted utility would be judged by
those working in the art when the application was filed in 1992. At best, Balzarini indicates what those
skilled art would have believed in 1987 as to predictability from in vitro tests. However, Balzarini does not
create a per se rule of lack of utility for all AIDS-related inventions. In making a rejection for lack of utility
it is the examiner’s burden to provide evidence showing that those working in the art would not believe the
objective truth of the stated utility at the time the application was filed. Langer, 503 F.2d at 1391-92, 183
USPQ at 297. Such evidence is lacking here and the examiner has failed to make out a prima facie case
for lack of utility.
Because we hold that the examiner has not made out a prima facie case, it is not necessary for us
to address the White declaration with respect to this ground of rejection.
The rejection of claims 1, 5-6, 8-9, 14-16, 26-27 and 31-36 under 35 U.S.C. § 101 is reversed.4
Rejection of claims 23-25
The examiner rejects these claims on a different theory. In the examiner’s view the claims read on
effecting various biochemical pathways and as such do not set forth a viable utility. Examiner’s Answer,
p. 5. The examiner asserts that
[u]nless the pathway at issue is critical to treating some condition, and the pathway
modification and disease treatment are inexorably linked, such pathway
modification is devoid [of] utility. . . . The skilled artisan could affect a biochemical
4 Our reversal of this rejection should not be construed as an indication that we are questioning the
truth of the examiner’s statement that “[t]reatment efforts, and efforts to cure this group of related symptoms have
produced no identifiable positive results.” The examiner may very well be right on this point. However, the examiner
must provide evidence to prove this assertion.
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