Appeal No. 2006-2131 Page 3
Application No. 10/309,422
Discussion
Claim 3, the broadest claim on appeal, is directed to nucleic acids encoding the
amino acid sequence of SEQ ID NO:16 or SEQ ID NO:28. Page 2, lines 4-9. These
two sequences differ only slightly: SEQ ID NO:28 has one amino acid (Ala939) that
SEQ ID NO:16 lacks.
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.”).
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
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
Answer, page 6. Therefore, our conclusion with respect to the § 101 issue also applies to the § 112 issue.
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