Appeal No. 2005-1164 Page 11
Application No. 09/721,131
Accordingly, we are not persuaded by appellant’s intimation that because
AZT and 3TC, or for that matter CRIXIVAN®, are recognized as effective for
treating HIV infection, that objective evidence demonstrating the operability of the
use of salt for treating HIV infection is not required to rebut the examiner’s prima
facie case. By analogy, we note that a number of methods for producing energy
are well known to a person of ordinary skill in the art. Producing energy by “cold
fusion,” however, is not. See e.g., In re Swartz, 232 F.3d 862, 864, 56 USPQ2d
1703, 1704 (Fed. Cir. 2000) (“the PTO provided several references showing that
results in the area of cold fusion were irreproducible”). In Swartz, the court found
“the PTO provided substantial evidence that those skilled in the art would
‘reasonably doubt’ the asserted utility and operability of cold fusion.” Id.
Accordingly, the evidentiary burden was shifted to Swartz to submit “evidence of
operability that would be sufficient to overcome reasonable doubt.” Id. Failing to
satisfy his evidentiary burden the court found that “the utility of Mr. Swartz’s
claimed process had not been established and that his application did not satisfy
the enablement requirement.” Id.
As in Swartz, on this record, the examiner provided evidence that those
skilled in the art would “reasonably doubt” the asserted utility and operability of
appellant’s claimed invention. Accordingly, in our opinion, the evidentiary
burden was properly shifted to appellant. For the reasons set forth above, we
find that appellant failed to carry his burden. Accordingly, we affirm the rejection
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