Appeal No. 2002-2029
Application No. 09/440,037
Our reviewing court has also made it abundantly clear that
the initial burden of challenging an applicant’s presumptively
correct assertion of utility rests on the PTO. Swartz, 232 F.3d
at 864, 56 USPQ2d at 1704. If the examiner provides evidence
sufficient to show that one of ordinary skill in the art would
reasonably doubt the asserted utility, the burden then shifts to
the applicant to submit evidence to convince such a person of
the invention’s asserted utility. Id. In this case, we hold
that the examiner has not satisfied the PTO’s initial burden of
proof.
According to the examiner, the “[a]ppellants are disclosing
and claiming a process to produce a beverage having up to 10%
ethyl acetate and, at such high level of ethyl acetate, such a
beverage is considered to be undrinkable.” (Answer, page 3.)
We note, however, that the examiner’s assertion is not supported
by any evidence, let alone substantial evidence. For example,
assuming that the examiner is correct that a beverage having “up
to 10% ethyl acetate” (which is inclusive of low amounts of
ethyl acetate) would be “undrinkable,” there is still no
explanation why such a beverage cannot be diluted.
U.S.C. § 101 fails, then the rejection under 35 U.S.C. § 112,
¶1, also fails.
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