Appeal No. 2004-1369 Page 25
Application No. 08/966,233
SUMMARY
On reflection, we agree with the examiner (Answer, page 21) 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 24 under 35
U.S.C. § 101 as lacking utility and § 1128, first paragraph, for lack of enablement
based on the finding of lack of utility. As set forth above, claims 3, 11-15, 22 and
25-42 fall together with claim 24.
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).
8 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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