Appeal No. 95-2710
Application 08/011,837
During prosecution, claims are to be given their broadest
reasonable interpretation. See In re Morris, 127 F.3d 1048,
1055, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997); In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Regarding utility, a predecessor of our reviewing court
stated in In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297
(CCPA 1974):
[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.
The examiner argues that appellants claim a method for
preventing the sexual transmission of AIDS (answer, page 5).
As indicated by appellants’ specification (page 10, lines 16-
20; page 13, lines 27-35; page 16, line 27 - page 17, line 16;
page 27, lines 11-13), appellants’ claimed methods encompass
binding cells which carry AIDS. The examiner errs, however,
by arguing as though appellants claim methods for treating
AIDS, rather than methods which prevent the transmission of
AIDS (answer, pages 5-6).
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