Appeal No. 2004-1346 Page 25
Application No. 08/971,338
SUMMARY
On reflection, we agree with the examiner (Answer, page 18) that the facts of
record here are analogous to those in Kirk. In our opinion, the disclosure of the
originally filed specification does not provide a specific, substantial, and credible
asserted utility nor a well established utility for the claimed invention. See also,
Answer, page 21. As set forth in Kirk, 376 F.2d at 945, 153 USPQ at 55, “[t]here
can be no doubt that the insubstantial, superficial nature of vague, general
disclosures … was recognized, and clearly rejected, by the Supreme Court” in
Brenner.
For the foregoing reasons, we affirm the rejection of claim 9 under 35
U.S.C. § 101 as lacking utility and § 1127, first paragraph, for lack of enablement
based on the finding of lack of utility. As set forth above, claims 4-8, 10 and 22-
33 fall together with claim 9.
Written Description:
Having disposed of all claims on appeal, see supra, we do not reach the
merits of the written description rejection under 35 U.S.C. § 112, first paragraph.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
7 The nonenablement rejection was presented simply as a corollary of the finding of lack of utility.
See e.g., Answer, page 5. Therefore, although we discuss only the § 101 rejection, our
conclusion also applies to the § 112 rejection.
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