Appeal No. 1996-0729
Application No. 07/859,572
According to the examiner, claims directed to affecting a biochemical pathway are absent utility
unless the claims recite specific therapeutic regimens producing some therapeutic benefit (answer, pages
4 and 11). To support this rejection, the examiner cites “Splendor form Brassiere, Inc v Rapid-
American Corp., 187 USPQ 158 (CCPA 1975)” (answer, page 4). No such case is found at that
volume and page. However, a case styled in that manner is found at 187 USPQ 151. The decision
reported therein is that of a United States District Court, not the Court of Customs Patent Appeals as
stated by the examiner. In that case, the district court raised on its own motion a question of utility
under 35 U.S.C. § 101 stating, 187 USPQ at 156: “if a patented invention fails to achieve the one
advantage over the prior art which the patent specification asserts for it, it can hardly be said to be
‘useful’ as required by 35 U.S.C. § 101.” If in fact, this is the case the examiner intended to cite, it is
not at all clear what relevance it has to the subject matter and issues at hand.
We also find the examiner’s argument that Cross v. Iizuka, 753 F.2d 1040, 224 USPQ 739
(Fed. Cir. 1985) and Nelson v. Bowler, 626 F.2d 853, 206 USPQ 881 (CCPA 1980) support the
position “that claims directed to mediating a biochemical pathway, absent an established nexus between
the pathway modification and therapeutic benefit are devoid [of] utility and properly rejected under 35
USC 101" (answer, page 10) not well taken.
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