Appeal No. 2005-1164 Page 5
Application No. 09/721,131
Utility:
According to appellant (Brief, page 4), “[c]laim 28 does not stand or fall
together with the remaining claims 22-27 and 29-42.” Accordingly, we limit our
discussion to representative claims 22 and 28. Claims 23-27 and 29-42 will
stand or fall together with claim 22. In re Young, 927 F.2d 588, 590, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991).
The examiner rejected all of the claims as lacking patentable utility.4
Claim 22
We recognize that “it is not a requirement of patentability that an inventor
correctly set forth, or even know, how or why the invention works.” Newman v.
Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989). However,
as a starting point we will discuss appellant’s two theories as to how his invention
works (Brief, page 6). We take each in turn.
Appellant’s first theory,
the administration of sodium chloride beyond the average daily
intake, but less than the toxic amount, should not disrupt the larger
human cells, but should be enough to disrupt the smaller HIV virus
cells. In other words, this particular amount of sodium chloride
should result in a change in osmotic pressure that dehydrates the
smaller HIV cells. They should thus be ruptured. Since the
particular amount of sodium chloride is still less than the toxic
amount, the particular amount should not be enough for rupturing
the larger human body cells by a change in osmotic pressure
resulting in dehydration.
4 The examiner rejected the claims under 35 U.S.C. § 101 and 35 U.S.C. § 112, first paragraph.
However the rejection for nonenablement was presented simply as a corollary of the finding of
lack of utility. See Paper mailed April 19, 2004, page 3, and Answer, page 5. Therefore,
although we discuss only the § 101 rejection, our conclusion also applies to the § 112 rejection.
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