Appeal No. 2005-1164 Page 8
Application No. 09/721,131
evidence on this record to demonstrate that the concentration of NaCl required to
dissociate an HIV particle from the chromatography resin as taught by Hrinda
would be different than the concentration of NaCl required to dissociate an HIV
particle from a T-cell.
“The PTO may establish a reason to doubt an invention's asserted utility
when the written description ‘suggest[s] an inherently unbelievable undertaking or
involve[s] implausible scientific principles.’” In re Cortright, 165 F.3d 1353, 1357,
49 USPQ2d 1464, 1466 (Fed. Cir. 1999 (quoting In re Brana, 51 F.3d 1560,
1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995)), alteration original. Stated
differently, we find that the examiner has presented the evidence necessary to
establish a reason for one skilled in the art to question the objective truth of the
statement of utility. In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297
(CCPA 1974). Specifically, we agree with the examiner, that the evidence of
record establishes that the amount of salt necessary to “alleviate” an HIV
infection6 as set forth in appellant’s claimed invention, is expressly excluded by
appellant’s claims. See e.g., claim 22, part (a)(ii) and (iii). Stated differently, the
evidence of record demonstrates that the amount of NaCl required to dissociate
an HIV particle from a T-cell, or disrupt an HIV particle exceeds the circulating
level (0.05 µM to about 1.0 µM) of NaCl appellant proposes to maintain in the
human being treated. Accordingly, in our opinion, the examiner has met his
burden of challenging applicant’s presumptively correct assertion of utility.
Brana, 51 F.3d at 1566, 34 USPQ2d at 1441. If the PTO provides evidence
6 By “disrupting” the HIV particle, disassociating the HIV particle from a T cell, or by some other
means.
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