Appeal No. 2004-0344
Application No. 09/759,016
technician but this does not mean that a result “cannot be
assured,” or that no “concrete” result is obtained, as alleged by
the examiner.
Utility is a question of fact. The claims must first be
interpreted to define the invention that is alleged to be useful.
Stiftung v. Renishaw PLC, 945 F.2d 1173, 20 USPQ2d 1094 (Fed.
Cir. 1991). While utility does not require commercial
marketability Barmag Barmer Masch. AG v. Murata Mach., Ltd, 731
F.2d 831, 221USPQ561 (Fed. Cir. 1984), commercial success may
demonstrate utility, Raytheon Co. v. Roper Corp., 724 F.2d 951,
220 USPQ 592 (Fed. Cir. 1983).
Appellants assert commercial success in the declaration of
Russell E. Parks, June 4, 2003 and the examiner offers no counter
arguments even though such commercial success may be an indicator
of utility.
While the examiner appears to backtrack on his assertion of
no tangible or useful result (see page 8 of the answer), the
examiner still asserts no “concrete” results are produced by the
instant claimed invention. In our view, the concrete result
would be the display of supplier responses and associated resumes
of skilled candidates matching the request of the user.
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