Appeal No. 2006-0732 Page 3
Application No. 10/060,974
The NHP protein is disclosed to be useful “in assays for screening for compounds
that can be used as pharmaceutical reagents useful in the therapeutic treatment of
mental, biological, or medical disorders and disease.” Page 19.
Finally, the specification discloses that the nucleotide sequence of SEQ ID NO:1
includes a polymorphic position. See page 17.
Discussion
The examiner rejected all of the claims as lacking a disclosed utility sufficient to
satisfy 35 U.S.C. § 101.1 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
1 The examiner also rejected all of the claims under 35 U.S.C. § 112, first paragraph, for lack of
enablement, but that rejection is merely as a corollary of the finding of lack of utility. See the Examiner’s
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