Appeal No. 1996-1090
Application No, 08/027,974
applicant's statements as to utility. Only then does the
burden shift to appellant to provide rebuttal evidence.
In re Gardner, 475 F.2d 1389, 1391, 177 USPQ 396, 397
(CCPA 1973); In re Marzocchi, 439 F.2d 220, 169 USPQ 367
(CCPA 1971)" In re Bundy, 642 F.2d 430, 433, 209 USPQ
48, 51 (CCPA 1981). Here, Examiner makes no comment as
to the specific, credible, and substantial nature of this
use and therefore the burden does not shift to appellants
to prove another use for the claimed fragment.
Second, given that one would be enabled to use the
claimed fragment for purposes of cross-reactivity with
CEA molecules, it is unnecessary to also determine
whether the specification would enable one of skill to
use the claimed fragment for differentiating between CEAs
and CEA-like peptides. "A claimed invention need not
accomplish all objectives stated in the specification,"
Raytheon Company v. Roper Corporation, 724 F.2d 951, 958,
220 USPQ 592, 598 (Fed. Cir. 1983), cert. denied, 469
U.S. 835 (1984).8
8 "3. A claimed invention need not accomplish all
objectives stated in the specification. The district
court held the '520 patent invalid in part because
Roper's oven, as set forth in claims interpreted by the
district court as requiring prevention of backflow and
autoignition, failed to accomplish all objectives stated
in the patent. Raytheon urged at oral argument that that
holding is compelled by Mitchell v. Tilghman, 86 U.S.
287, 396-97 (1873) (a patent is void "if the described
result cannot be obtained by the described means"). In
6
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