Appeal No. 1996-0729
Application No. 07/859,572
pharmacological utility for the compound. It distinguished the case from cases where only a generalized
“nebulous” expression, such as “biological properties,” had been disclosed in the specification. The
court held that such statements “convey little explicit indication regarding the utility of a compound.”
Cross, 753 F.2d at 1048, 224 USPQ at 745.
Thus, Cross v. Iizuka and Nelson v. Bowler made clear that a showing of pharmacological
activity, i.e., mediating a biochemical pathway, is sufficient to establish utility for a claimed compound.
Here, the examiner has not challenged the patentability of the compound claims. Therefore, this4
argument is not well taken.
Rather, we find that the statement of the invention at page 4, lines 25-35 of the specification
coupled with Figures 9-11 and its supporting data on pages 24-29 sufficient to satisfy the utility
requirements of 35 U.S.C. § 101. The examiner has not articulated reasons why the skilled artisan
would conclude that the asserted utility is not credible or explained why the evidence of record, e.g., at
specification pages 24-29, that supports the asserted utility would not be persuasive to one of ordinary
skill in the art.
Accordingly, we reverse the rejection of method claims 1, 12-14, 20 and 21 under 35 U.S.C.
§ 101 for lack of utility.
4The examiner admits that “[a]ppellants’ composition claims have numerous uses, not limited to the
pathway modification herein claimed” (answer, page 11).
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