Appeal 2007-2517
Application 10/311,196
utility for the claimed invention. “Enablement, or utility, is determined as of
the application filing date.” Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at
1442 n.19.
Li was published in 2002, after the instant application was filed.
Consequently, it cannot be used to determine whether the claimed invention
had a utility as of the filing date. Appellants have provided no evidence that
the content disclosed by Li in 2002 was available to those skilled in the art
before the filing date of the instant application. Therefore, Li’s disclosure
that T1R3 is a human taste receptor cannot be relied on to show the utility of
the polypeptide comprising SEQ ID NO: 2. Montmayeur was also published
after the filing date; for the same reason, it also cannot be relied upon to
establish utility of the claimed invention.
Appellants’ contend that Brana holds that “[a] declaration, though
dated after applicants’ filing date, can be used to substantiate any doubts as
to the asserted utility since this pertains to the accuracy of a statement
already in the specification.” (Reply Br. 4). However, in this case, the issue
is whether there is a statement in the Specification of an asserted utility, not
the accuracy of a statement as in Brana.
For the reasons described above, we affirm the rejection of claim 1 for
lack of utility. Claims 2-7, 9, 11, 16, and 17 fall with claim 1 because they
were not separately argued.
“How to use” rejection
Claims 1-7, 9, 11, 16, and 17 are also rejected under 35 U.S.C. § 112,
first paragraph, for failing to teach how to use the claimed invention
(Answer 6). If a claim fails to meet the utility requirement of 35 U.S.C. §
101 because it is not useful, then it necessarily fails to meet the how-to-use
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