Appeal No. 2006-3253 Page 11
Application No. 10/276,547
accurate data, the expression data do not credibly support the asserted utility for the
reasons discussed above.
Appellant cites In re Langer, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974), as
supporting the use of post-filing evidence to support “the specification’s assertion of
utility – a fact.” Appeal Brief, page 7, n.5. The facts of this case, however, distinguish it
from Langer.
The claims in Langer were directed to products and methods for inhibiting dental
cavities with stannous chelates such as Sn2EDTA (distannous ethylenediaminetetra-
acetic acid). See 503 F.2d at 1386, 183 USPQ at 293. The specification stated that the
claimed products prevented dental cavities and provided working examples showing,
among other things, that rats having the claimed toothpaste composition applied to their
teeth experienced a 40% reduction in cavities compared to control rats. See id. at
1385-1386, 183 USPQ at 292-293.
The examiner rejected the claims for lack of utility, citing several references that
taught that stannous chelates were not effective in preventing cavities, and the applicant
filed an affidavit providing toxicity data and confirming several of the working examples
in the specification. See id. at 1387, 183 USPQ at 294. The court considered the
evidence and concluded that
the in vivo dental paste experiment (employing standard experimental
animals) described in [the applicant’s] affidavit, which verifie[d] Example
16 of appellant’s specification, is sufficient to rebut the prima facie case
and prove utility to one skilled in the art for Sn2EDTA.
Id. at 1393, 183 USPQ at 298.
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