Ex parte BASHIR-HASHEMI - Page 3




          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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