Appeal 2007-1139
Application 10/052,664
unbelievable undertaking or involve implausible scientific
principles’ and where ‘‘prior art * * * discloses structurally
similar compounds to those claimed by the applicants which
have been proven * * * to be effective’’).
A patent examiner must accept a utility asserted by an
applicant unless the Office has evidence or sound scientific
reasoning to rebut the assertion. The examiner’s decision must
be supported by a preponderance of all the evidence of record.
In re Oetiker,977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). More specifically, when a patent application
claiming a nucleic acid asserts a specific, substantial, and
credible utility, and bases the assertion upon homology to
existing nucleic acids or proteins having an accepted utility, the
asserted utility must be accepted by the examiner unless the
Office has sufficient evidence or sound scientific reasoning to
rebut such an assertion. ‘‘[A] ‘rigorous correlation’ need not be
shown in order to establish practical utility; ‘reasonable
correlation’ is sufficient.’’ Fujikawa v. Wattanasin, 93 F.3d
1559, 1565, 39 USPQ2d 1895, 1900 (Fed. Cir. 1996). The
Office will take into account both the nature and degree of the
homology.
Utility Examination Guidelines, 66 Fed. Reg. 1092, 1096 (USPTO January
5, 2001).
In the case before us, Appellants disclosed in the Specification that the
claimed Ntp2B polypeptide is a type II potassium sodium co-transporter.
Appellants then filed a Declaration which, using the procedures disclosed in
the Specification, substantiated that utility. The Examiner has failed to
establish by evidence or sound reasoning that the utilities in the
Specification would not be credible to the skilled artisan for the reasons set
forth above, and the rejection must be reversed.
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