Appeal No. 1996-0716
Application 08/107,661
For reasons expressed below, appellants have failed to
convince us that we "misapprehended or overlooked" any fact or
issue of law in reaching our conclusion that appellants'
claims are not patentable under both 35 U.S.C. §§ 101 and 112.
As we noted at page 6 of our decision, whether or not an
invention lacks utility is a question of fact. We also found
that a deficiency under 35 U.S.C. § 101 created a deficiency
under 35 U.S.C. § 112, first paragraph. We found that
appellants' disclosure lacked sufficient detail to satisfy the
requirements for an adequate disclosure of utility. We found
the statement in appellants' specification at page 1, lines 11
and 12 that the compounds of appellants' process were
"valuable intermediates for pesticides and herbicides" to be
inadequate without more to establish a utility for the
intermediates prepared by appellants' process. We also found
that the two, parenthetical references to the Ludvik patent
(page 1, lines 10 and 15 of the specification), taken in the
context in which they were made, were understood to represent
that Ludvik discloses the acknowledged prior art process over
which appellants' process is said to be an improvement and
that Ludvik discloses (and indeed claims) the compound 4-
methylsulfonyl-1-methyl-2-chlorobenzene. See pages 7 and 8 of
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