Appeal 2007-3881
Application 09/833,782
utility of a claimed invention. See In re Langer, 503 F.2d 1380, 1391
(CCPA 1974).
After the Examiner has challenged the asserted utility of a claimed
invention and the Applicant has provided evidence or argument in rebuttal,
the merits of the rejection must be re-evaluated in light of all the evidence of
record, and patentability determined based on a preponderance of the
evidence. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): “After
evidence or argument is submitted by the applicant in response, patentability
is determined on the totality of the record, by a preponderance of the
evidence with due consideration to persuasiveness of argument.”
In this case, the Examiner’s rejections are not supported by a
preponderance of the evidence of record. The rejections under 35 U.S.C.
§§ 101 and 112, first paragraph, for lack of utility are reversed.
REVERSED
LP
LEXICON PHARMACEUTICALS, INC.
8800 TECHNOLOGY FOREST PLACE
THE WOODLANDS TX 77381-1160
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