Appeal No. 2005-2207 Page 10
Application No. 09/548,933
on any of the ‘diseases of hyperexcitability’” (Answer, page 10) is insufficient to overcome
the examiner’s initial burden.
We conclude that the specification discloses an asserted utility for the claimed
nucleic acids which is both substantial and specific, as required by 35 U.S.C. § 101, and
the examiner has not provided evidence sufficient to establish that one of ordinary skill in
the art would reasonably doubt that asserted utility. We therefore reverse the rejection of
the claims under 35 U.S.C. § 101, and the corresponding rejection under § 112, first
paragraph.
REVERSED
Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Demetra J. Mills )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
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