Appeal No. 1996-3170
Application No. 08/180,371
fragment of SEQ. ID NO: 6 will have any of the functional properties alleged
for the invention. If the claimed peptide does not have any activity described
in the disclosure, the artisan cannot use the peptide, a composition
comprising it, or a labeled or immobilized peptide for any purpose.
Having reviewed the examiner's statements and reasoning in support of this
rejection, (Answer, pages 3-7), it reasonably appears that the examiner is, in fact,
questioning whether the disclosure in support of the claimed invention sufficiently
establishes that the claimed peptide fragment would be expected to be useful in the
manner described in the disclosure and as noted by the appellant (Principal Brief, page 4,
and the paragraph bridging pages 8-9). The reasoning proffered by the examiner
questions whether appellant has demonstrated that the claimed peptide is useful for the
disclosed uses which is an issue properly raised under 35 U.S.C. § 101 or 35 U.S.C. §
1
112, first paragraph. However, the rejection before us is based on the "how to use"
requirement of 35 U.S.C. § 112, first paragraph and the issue of lack of utility has not been
briefed by either the examiner or the appellant.
The rejection presented in this appeal is predicated on the premise that the
disclosure does not provide an enabling disclosure which would permit those skilled in this
art to use the invention for the stated use without undue experimentation.
The examiner bears the initial burden of providing reasons for doubting the
1We are cognizant that the examiner may reject a claim under 35 U.S.C. § 112, first
paragraph, as being non-enabled where the claimed invention is not useful. See In re
Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995).
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