Appeal No. 1996-0709
Application No. 08/228,245
negative.
It is well settled that a statement of utility or
enablement in a specification must be accepted by the examiner
absent reasons why one skilled in the art would have had
reason to doubt the objective truth of such statement. In re
Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974); In
re Marzocchi,
439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971). Only one of
the stated utilities in a specification needs to be credible.
See, e.g., Raytheon Co. v. Roper Corp., 724 F.2d 951, 958, 220
USPQ 592, 598 (Fed. Cir. 1983). Moreover, when the claimed
compound belongs to a class of compounds whose members are
recognized to be useful for a particular purpose and it is
within the skill of the art to use the claimed compound for
that purpose, the requirements of both section 101 and 112 are
met by a disclosure that the claimed compound is useful for
that purpose. See, e.g., In re Hitchings, 342 F.2d 80, 89-91,
144 USPQ 637, 644-46 (CCPA 1965). To violate these
requirements, the claimed compound must be “totally incapable
of achieving useful results.” Brooktree Corp. v. Advanced
4
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