Appeal No. 2005-0731 Page 4
Application No. 09/974,712
treatment of mental, biological, or medical disorders and disease. Given the similarity
information and expression data, the described NHP can be targeted . . . in order to
treat disease, or to therapeutically augment the efficacy of, for example,
chemotherapeutic agents.” Page 19.
Procedural Background
On March 30, 2005, Appellants were notified of certain similarities between the
present case and previously decided Appeal 2004-1732 (commonly assigned
application no. 09/714,882). Appellants were ordered (pursuant to 37 CFR § 41.50(d))
to explain why the appeal in this case should not be affirmed on the same basis as
previous appeal. Appellants have responded to the Rule 41.50(d) order, pointing out an
aspect in which the facts of the present application differ from those at issue in Appeal
2004-0343. “[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.” Response filed May 2, 2005, 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
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
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007