Appeal No. 2005-1422 Page 17
Application No. 09/997,522
description provision of 35 U.S.C. § 112, first paragraph. As discussed supra
claims 3, 6, 7, 9, 13 and 58 fall together with claim 12.
Enablement:
Claims 3, 6, 7, 9, 12, 13, and 58 stand rejected under the enablement
provision of 35 U.S.C. § 112, first paragraph. Having disposed of claims 3, 6, 7,
9, 12, 13, and 58 under the written description provision of 35 U.S.C. § 112, first
paragraph, we do not reach the merits of the rejection of these claims under the
enablement provision of 35 U.S.C. § 112, first paragraph.
Utility:
Claims 3-7, 9, 10, 12, 13, 57 and 58 stand rejected under 35 U.S.C. § 101
as lacking utility and § 112, first paragraph, for lack of enablement based on the
finding of lack of utility.9
The initial burden of showing lack of utility is on the examiner. See Brana,
51 F.3d at 1566, 34 USPQ2d at 1441. See also In re Langer, 503 F.2d 1380,
1391, 183 USPQ 288, 297 (CCPA 1974) (“[A] specification which contains a
disclosure of utility which corresponds in scope to the subject matter sought to be
patented must be taken as sufficient to satisfy the utility requirement of § 101 for
the entire claimed subject matter unless there is reason for one skilled in the
9 The examiner rejected the claims under both 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 Supplemental Answer, page 5. Therefore, although we discuss only
the § 101 rejection, our conclusion also applies to the rejection under the enablement provision of
35 U.S.C. § 112, first paragraph.
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