Appeal No. 95-2743
Application 08/023,016
no treatment for dementia.” Id. The examiner cites the Merck Manual for support.
In addition, the examiner argues that (i) “there is no model recognized as reasonably
predictive of success for treating Alzheimer’s disease,” and (ii) “Applicant fails to provide a
general teaching that Applicant’s in-vitro assay is recognized by those skilled in the art as
reasonably predictive for effective treatment of Alzheimer’s disease.” Id.
We find that the examiner’s position cannot be sustained.
It is well settled that “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.” In re Langer, 503 F.2d 1380, 1391, 183 USPQ 289, 297
(CCPA 1974). Here, we find that the examiner has not provided sufficient reasons as to
why such persons would question the specification’s statements of utility. To the contrary,
a complete reading of the only reference cited by the examiner, the Merck Manual,
describes several types of dementia which are treatable and states that “dementia should
not be regarded as a hopeless condition . . . Each case requires careful consideration,
and the most appropriate investigations should be selected for each patient.” Merck
Manual, p. 1309, col. 2, first complete para. In addition, the appellants have provided two
references which describe potential treatments for neurodegenerative diseases including,
inter alia, Alzheimer’s disease. Brief, p. 4, and attachments thereto. Conspicuous in its
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