Appeal 2007-1068
Application 10/015,394
DISCUSSION
THE CLAIMS
Claims 28-32 are pending and on appeal.
The claims stand or fall together, as Appellants have not made
separate arguments for their patentability. 37 C.F.R. § 41.37(c)(1)(vii).
We will focus on claim 28 as representative:
28. An isolated antibody that specifically binds to the polypeptide
of SEQ ID NO:376.
UTILITY and ENABLEMENT
The Examiner rejected claims 28-32 as lacking utility sufficient to
satisfy 35 U.S.C. § 101. The Examiner also rejected the claims as lacking
enablement under 35 U.S.C. § 112, first paragraph. As the enablement
rejection is largely a corollary of the Examiner’s finding of lack of utility,
our conclusion with respect to the § 101 issue will also apply to the § 112
issue.
Section 101 requires a utility that is both substantial and specific.
In re Fisher, 421 F.3d 1365, 1371, 76 USPQ2d 1225, 1229 (Fed. Cir. 2005).
A substantial utility is one that “show[s] that an invention is useful to the
public as disclosed in its current form, not that it may prove useful at some
future date after further research. Simply put, to satisfy the ‘substantial’
utility requirement, an asserted use must show that that claimed invention
has a significant and presently available benefit to the public.” Id., 76
USPQ2d at 1230. A specific utility is “a use which is not so vague as to be
meaningless.” Id. In other words, “in addition to providing a ‘substantial’
utility, an asserted use must also show that th[e] claimed invention can be
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