Appeal No. 95-1618
Application 08/033,456
appellant*s disclosed assay procedures and demonstrations of antiinflammatory and analgesic activity
of the claimed compounds to establish that a person skilled in the art would have reasonably
concluded that none of the asserted utilities are credible. The mere identification of a single
pharmacological activity use which provides an immediate benefit to the public satisfies the utility
requirement. Nelson v. Bowler, 626 F.2d, 853, 856, 206 USPQ 881, 883 (CCPA 1980). In this case,
appellants’statement that the claimed compounds have several pharmacological activities would
clearly provide an immediate benefit to the public, such as being used as an antiinflammatory and
analgesic agent and for the treatment of chronic inflammatory diseases, psoriasis, and immune
dysfunctions such as systemic lupus erythematosis.
The examiner*s statements regarding the deficiencies of the specification as lacking a
disclosure of in vitro and in vivo tests, lack of a showing of empirical results, and lack of evidence
of effectiveness of the claimed compounds are all conclusional in nature and are not corroborated by
evidence or scientific reasoning. As for the examiner*s conclusion that the plurality of possible
compounds encompassed by the claimed subject matter would not have the utility asserted by
appellants, the examiner has made broad sweeping statements without presenting any factual evidence
or analysis of appellants* disclosure to support his conclusion. The examiner has not presented any
factual showing or analysis of appellants* disclosed examples, assay procedures, and demonstration
of pharmacological activity which would cause a person having ordinary skill in the art to reasonably
doubt the objective truth of appellants* statements of asserted utility. Accordingly, we find that
appellants* disclosure of utility satisfies 35 U.S.C. § 101 and meets the enablement requirement of
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