Appeal No. 1997-2182
Application 08/137,443
The examiner's criticism of the claims as set forth in
the statement of his rationale for rejecting the claims
appears to be an expression of his concern that the claimed
compounds and method of using the same may not be efficacious
or even work at all. While the examiner's concern is laudable,
it is misplaced here. As the court observed in In re Brana,
51 F.3d 1560, 1567, 34 USPQ2d 1436, 1442 (Fed. Cir. 1995):
The Commissioner, as did the Board, confuses the
requirements under the law for obtaining a patent with
the requirements for obtaining government approval to
market a particular drug for human consumption. See Scott
v. Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 (Fed.
Cir. 1994)
Simply stated, approval of the Food and Drug Administration is
not a prerequisite for finding a compound useful within the
meaning of 35 U.S.C. § 112, first paragraph. Only objective
enablement is required.
To the extent the position taken by the examiner is that
appellants' claims may include inoperative embodiments we
observe that it has been held that, even assuming it could be
established that the claims do embrace some inoperative
embodiments, it is not the function of the claims to
specifically exclude all possible inoperative substances or
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