Appeal No. 1996-1090
Application No, 08/027,974
In other words, even if, for argument's sake, the
Examiner is correct, one would nonetheless be enabled to
use the claimed fragment to make antibodies reactive to
CEA. As we stated, this objective is disclosed and one
would be enabled to accomplish that objective. That is
all that is necessary. Given that the claim is
specifically limited to that use and not drawn to the
differentiation of CEAs and CEA-like peptides, the "use"
prong of the first paragraph of 35 U.S.C. ? 112 is
satisfied.
Accordingly the rejection of claim 19 for lack of
enablement under 35 U.S.C. ? 112 is reversed.
REVERSED
Mitchell, the described result was production of fatty
acids and glycerin from fatty or oily substances by the
action of water at high temperature and pressure. Id. at
296, 380. That was the single result stated and was an
element of the claim. Id. at 296. To interpret Mitchell
as requiring that all claims must set forth inventions
satisfying all objectives would make no sense. When a
properly claimed invention meets at least one stated
objective, utility under ? 101 is clearly shown. See
e.g., Standard Oil Co. (Indiana) v. Montedison, S.P.A.,
664 F.2d 356, 375, 212 USPQ 327, 344 (3rd Cir. 1981),
cert. denied, 456 U.S. 915 (1982); E.I. du Pont de
Nemours & Co. v. Berkley & Co., 620 F.2d 1247, 1258 n.10,
1260 n.17, 205 USPQ 1, 8 n.10, 10 n.17 (8th Cir. 1980);
Krantz and Croix v. Olin, 148 USPQ 659, 661-62 (CCPA
1966); Chisum on Patents, ? 4.04.?
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