Appeal No. 1996-0709
Application No. 08/228,245
The examiner has rejected the claim under 35 U.S.C. § 101
as lacking a practical utility and under 35 U.S.C. § 112,
first paragraph, as failing to adequately teach one of
ordinary skill in the art how to use the claimed compound.
Our reviewing court stated in In re Ziegler, 992 F.2d 1197,
1200-01, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993):
The how to use prong of section 112 incorporates
as a matter of law the requirement of 35 U.S.C. §
101 that the specification disclose as a matter of
fact a practical utility for the invention... If the
application fails as a matter of fact to satisfy 35
U.S.C. § 101, then the application also fails as a
matter of law to enable one of ordinary skill in the
art to use the invention under 35 U.S.C. § 112.
The examiner has the initial burden of demonstrating that the
claimed compound lacks a practical utility under section 101
or 112. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992) (the examiner has “the initial
burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” ). The
dispositive question is, therefore, whether the examiner has
met his initial burden of establishing that the claimed
compound lacks a practical utility within the meaning of 35
U.S.C. §§ 101 and 112. We answer this question in the
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