Appeal No. 95-1364
Application No. 07/919,287
pathway, in a patient without producing any therapeutic benefit or physiologically
detectable effect.
Examiner’s Answer, p. 6.
We do not agree with the examiner’s implicit position that claims which read on affecting
biochemical pathways necessarily do not set forth a viable utility. We know of no such per se rule. It may
be that, based on appropriate evidence, claims directed to effecting biochemical pathways can be held to
lack utility. However, we do not have to make that determination in this appeal because the rejected claims
set forth a utility not just a pathway. Claim 23 specifically states that the method is for “treating a viral
condition . . . using a therapeutically effective amount of a compound . . . .” “Viral condition” is defined
in the specification as
rubella, yellow fever, rabies, influenza, Korean hemorrhagic fever, common colds,
respiratory syncytial virus, measles, mumps, HIV, hepatitis B, Herpes simplex,
CMV, chicken pox, smallpox, Marburg virus, hemorrhagic fever, Lassa fever and
African swine fever.
Specification, p. 4, line 34 - p. 5, line 4. The claim also requires the use of a “therapeutically effective
amount” of the compound. This phrase requires that the compound have a beneficial effect on a viral
condition such as influenza. The claim does not encompass affecting a biochemical pathway without
producing a therapeutic benefit or physiologically detectable effect as asserted by the examiner.
Additionally, as with claims 1, 5-6, 8-9, 14-16, 26-27 and 31-36, the examiner has failed to
support the holding of lack of utility with any evidence which would present doubts as to the objective truth
of the statements of utility in the specification and claims.
The rejection of claims 23-25 under 35 U.S.C. § 101 is reversed.
The rejections under 35 U.S.C. 112, ¶ 1
The standards for establishing a prima facie case of lack of enablement is similar to that for lack
of utility:
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