Appeal No. 96-3092
Application 08/307,498
The Federal Circuit has stated that “[a]n invention
need not be the best or the only way to accomplish a certain
result, and it need only be useful to some extent and in
certain applications: ‘[T]he fact that an invention has only
limited utility and is only operable in certain applications
is not grounds for finding lack of utility.’ Envirotech Corp.
v. Al George, Inc., 730 F.2d 753, 762, 221 USPQ 473, 480 (Fed.
Cir. 1984)”. Stiftung v. Renishaw PLC, 945 F.2d 1173, 1180,
20 USPQ2d 1094, 1100 (Fed. Cir. 1991). When all the facts on
this record are considered, it appears that no undisclosed
structure is required to implement the invention for low grade
optical fibers such as plastic optical fibers. The
specification states that additional structure may be utilized
for higher grade fibers. The three declarations all support
the appellants’ position that the disclosed device at least
works for plastic fibers without additional structure. The
examiner does not seem to challenge the position that the
disclosed device works for lower grade fibers, and if the
examiner does challenge this position, he offers no evidence
in support of it.
Since utility under 35 U.S.C. § 101 is a question of
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