Appeal No. 2004-1761 Page 4
Application No. 10/044,807
as NHP peptides/domains corresponding to a NHP . . . NHP antibodies . . ., antagonists
or agonists . . . can be used to directly treat disease or disorders.” Pages 12-13.
The NHP protein is disclosed to have “a variety of uses. These uses include, but
are not limited to, the generation of antibodies, as reagents in diagnostic assays, for the
identification of other cellular gene products related to the NHP, and as reagents in
assays for screening for compounds that can be used as pharmaceutical reagents
useful in the therapeutic treatment of mental, biological, or medical disorders and
disease.” Page 21.
The specification discloses that NHP-binding antibodies “may be used, for
example, in the detection of a NHP in a biological sample and may, therefore, be
utilized as part of a diagnostic or prognostic technique whereby patients may be tested
for abnormal amounts of a NHP. . . . Such antibodies may additionally be used in
methods for the inhibition of abnormal NHP activity. Thus, such antibodies may be
utilized as a part of treatment methods.” Pages 29-30.
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
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
Answer, pages 8-9. Therefore, our conclusion with respect to the § 101 issue also applies to this § 112
issue.
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