Appeal of a rejection of claims to a chemical compound. The specification taught that the claimed compounds have “electron transport activity†similar to a known compound. The examiner rejected the claims under 35 U.S.C. §§ 101 & 112, finding that the disclosure of electron transport activity was not a disclosure of utility, and stating that the specification “in no way shows what practical result may be obtained or how any practical problem may be solved or how to use the compounds in any way to produce any desired result.†The Patent Office Board of Appeals agreed with the examiner’s rejection, stating that the specification was “nothing more than an invitation to experiment to find a utility, which experimentation would have to be extensive.â€
The C.C.P.A. reversed both the rejection under §§101 and 112. With regard to the §101 rejection, the court noted the examiner’s position that electron transfer is a physio-chemical property and not a utility. The court agreed with the examiner, but then found that the appropriate question with regard to utility is “whether knowledge of that property necessarily and implicitly renders it readily apparent to one of ordinary skill that the present compounds are useful.†The court found this question answered in the affirmative, stating that “since appellants' newly discovered compounds belong to a class of compounds, the members of which have become well recognized as useful for a particular purpose because of a particular property, the only reasonable conclusion is that the new compounds, also possessing that property, are similarly useful.â€
Excerpts and Summaries
Created
Thursday 04 of September, 2008 21:02:18 GMT by Unknown
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Sunday 07 of September, 2008 16:09:14 GMT by Unknown