Appeal No. 2004-1040 Page 5
Application No. 09/770,643
previous appeal. On July 19, 2004, Appellants responded to the Rule 196(d) order,
pointing out two aspects in which the facts of the present application differ from those at
issue in Appeal 2004-0343. See Paper No. 22. “[I]n order to preserve such issues for
appeal to the Federal Circuit, . . . Appellants respectfully request[ed] the Board to
address all of the assertions of utility set forth by Appellants in the Appeal Brief.” Id.,
pages 3-4. We therefore proceed to the merits of the appeal.
Discussion
The examiner rejected all of the claims as lacking a disclosed utility sufficient to
satisfy 35 U.S.C. § 101.1 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 been evidenced.” Id. at 529, 148
USPQ at 693. The Patent Office had rejected the claimed process for lack of utility, on
the basis that the product produced by the claimed process had not been shown to be
useful. See id. at 521-22, 148 USPQ at 690. On appeal, the Court of Customs and
1 The examiner also rejected all of the claims under 35 U.S.C. § 112, first paragraph, for lack of
enablement, but that rejection is merely as a corollary of the finding of lack of utility. See the Examiner’s
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