Appeal No. 2003-1794 Page 5
Application No. 09/804,969
17, 2001. In response, Appellants cancelled claim 9 and rewrote claim 8 in its
present form. Paper No. 10, received March 11, 2002. Appellants stated that
as claim 8 has been amended to recite the complete nucleotide
sequence of SEQ ID NO:1 [sic, SEQ ID NO:14] . . . and as claim 9
has been cancelled without prejudice and without disclaimer. . .,
Applicants submit that the rejection of claims 8 and 9 under 35
U.S.C. § 102(b) has been overcome.
Id., page 10. Thus, as the prosecution history makes clear, the language of the
claims on appeal does not allow for any variation in the recited sequences,2 even
though the open claim language allows for inclusion of additional sequence(s) at
the 3’ or 5’ end of the claimed polynucleotides.
2. Utility
The examiner rejected claims 8 and 10 for lack of utility. The examiner
bears the initial burden of showing that a claimed invention lacks patentable
utility. See In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir.
1995) (“Only after the PTO provides evidence showing that one of ordinary skill
in the art would reasonably doubt the asserted utility does the burden shift to the
applicant to provide rebuttal evidence sufficient to convince such a person of the
invention’s asserted utility.”).
The seminal decision interpreting the utility requirement of § 101 is
Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966). At issue in Brenner
was a claim to “a chemical process which yields an already known product
whose utility—other than as a possible object of scientific inquiry—ha[d] not yet
2 Thus, to the extent that the specification discusses NHP “homologs,” “domains,” “mutant NHP
gene[s]”, hybridizing sequences, and functional equivalents (e.g., pages 3-5, 10-12, and 16-17),
the present claims do not encompass those embodiments.
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