Appeal No. 1999-1223 Page 7
Application No. 08/446,021
What is not helpful is the examiner’s insistence that birds produced by the claimed
method be “useful.” As argued by appellants, the examiner’s insistence in this regard
bespeaks more of a utility rejection under 35 U.S.C. § 101 than an enablement
rejection.
Furthermore, to the extent the examiner may be concerned that the claims
embrace possible inoperative embodiments, we point out Atlas Powder Co. v. E.I. du
Pont de Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir.
1984):
Even if some of the claimed combinations were inoperative, the claims are
not necessarily invalid. “It is not a function of the claims to specifically
exclude . . . possible inoperative substances . . . .” In re Dinh-Nguyen,
492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974) (emphasis
omitted). Accord, In re Geerdes, 491 F.2d 1260, 1265, 180 USPQ 789,
793 (CCPA 1974); In re Anderson, 471 F.2d 1237, 1242, 176 USPQ 331,
334-35 (CCPA 1973). Of course, if the number of inoperative
combinations becomes significant, and in effect forces one of ordinary
skill in the art to experiment unduly in order to practice the claimed
invention, the claims might indeed be invalid. See, e.g., In re Cook, 439
F.2d 730, 735, 169 USPQ 298, 302 (CCPA 1971).
To summarize, the claims on appeal only require the method result in a bird
which has a changed phenotype. There is no requirement that the change in
phenotype be "useful" as apparently the examiner is demanding. The change in
phenotype may indeed be considered frivolous by many, yet the resulting bird will still
be “useful.” Again, it may be the examiner's concern that undue experimentation would
be required to practice the invention as to any specific embodiment or that a substantial
number of embodiments embraced by the claims on appeal are not enabled without
undue experimentation. If so, she has not made that case.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007