Appeal No. 95-3746
Application 08/063,431
8). A predecessor of our appellate 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.
Each case of practical utility must be decided on its own
facts. See Fujikawa v. Wattanasin, 93 F.3d at 1564, 39 USPQ2d
at 1899. The examiner has not carried her initial burden of
providing evidence or sound technical reasoning which
indicates that one of ordinary skill in the art would have
questioned the objective truth of appellants’ supported
statements in their specification that their claimed methods
are useful for treating mammals to selectively block the
uptake of serotonin or dopamine.
For the above reasons, we do not sustain the rejection
under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 112, first paragraph
Regarding enablement, a predecessor of our appellate
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