Appeal No. 1997-2188
Application 08/137,440
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
ineffective amounts and proportions. See, Atlas Powder Co. v.
E.I. Du Pont de Nemours & Co, 750 F.2d 1569, 1576, 224 USPQ
409, 414 (Fed. Cir. 1984) citing In re Dinh-Nguyen, 492 F.2d
856, 858, 859, 181 USPQ 46, 48 (CCPA 1974). Accordingly, for
all the above reasons, we reverse the rejection of claims 1
through 30 under 35 U.S.C. § 112, first paragraph.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
The examiner has rejected claim 30 because the examiner
believes appellants' expressed intention of what they intended
to claim in claim 30 does not comport with the actual language
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