Appeal No. 2005-0102 Page 4
Application No. 09/840,787
2. Utility
The examiner rejected claims 2-14 and 21 under 35 U.S.C. §§ 101 and 112, first
paragraph, for lack of patentable utility.
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 burden shift to the applicant
to provide rebuttal evidence sufficient to convince such a person of the invention’s
asserted utility.”).
The U.S. Court of Appeals for the Federal Circuit recently addressed the utility
requirement in the context of a claim to DNA. See In re Fisher, 421 F.3d 1365, 76
USPQ2d 1225 (Fed. Cir. 2005). The Fisher court interpreted Brenner v. Manson, 383
U.S. 519, 148 USPQ 689 (1966), as rejecting a “de minimis view of utility.” 421 F.3d at
1370, 76 USPQ2d at 1229. The Fisher court held that § 101 requires a utility that is
both substantial and specific. Id. at 1371, 76 USPQ2d at 1229. The court held that
disclosing a substantial utility means “show[ing] that an invention is useful to the public
as disclosed in its current form, not that it may be useful at some future date after
further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted
use must show that that claimed invention has a significant and presently available
benefit to the public.” Id., 76 USPQ2d at 1230.
The court held that a specific utility is “a use which is not so vague as to be
meaningless.” Id. In other words, “in addition to providing a ‘substantial’ utility, an
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