Appeal No. 2002-0798 Page 7
Application No. 09/107,688
Id., page 8, lines 8 through 18. Again, this challenge to the utility of the claimed
invention is anomalous where the examiner has expressly stated that "[i]t is noted that
Appellants' Issue D (e.g., relating to utility) is not at issue" (Id., page 3, line 10)1.
In a nutshell, we believe that the examiner is off track in challenging the
definiteness of applicants' claims and the utility of the claimed invention. We find that
the examiner does not set forth adequate reasons to doubt the objective truth of
statements in applicants' specification here relied on for enabling support, and we
reverse the rejection of claims 13, 23 through 26, 29, and 30 under 35 U.S.C. § 112,
first paragraph.
Other Issue
One further matter warrants attention. In the Office Action mailed June 14, 2000
(Paper No. 8), the examiner rejected claims 13, 23 through 26, and 29 for obviousness-
type double patenting over claims 1 through 4 of U.S. Patent No. 5,780,241 (id. at
page 16). That rejection was repeated at page 25 of the Final Office Action mailed
January 2, 2001 (Paper No. 11). Subsequently, in an Advisory Action mailed April 25,
2001 (Paper No. 14), the examiner denied entry of applicants' amendment proffered
after final rejection but did not withdraw the double patenting rejection.
1 In their Appeal Brief, applicants set forth Issue D as follows: "[w]hether or not
Applicants' indication that the claimed methods produce compounds that can be used
as antibiotics, coupled with a demonstration that representative compounds produced
by the claimed methods possess antibiotic activity, satisfies the utility requirement of the
patent laws" (Paper No. 15, page 4, lines 1 through 4).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007