Appeal from rejection by PTO Board of Appeals. The application at issue was a continuation in parent (CIP) of an abandoned parent application. The parent application had been abandoned after being rejected for lack of utility under §§ 101 and 112. The CIP was rejected as unpatentable under § 102(b) over a Canadian reference. The applicant attempted to claim priority to the parent application, in order to get around the § 102(b) rejection, but the examiner held that there was no continuity between the applications because of the parent application’s lack of utility. The examiner also held that the applicant could not re-contest the utility rejection of the parent application, on res judicata grounds. The board affirmed on all grounds.
After reversing the board on the res judicata holding, the court discussed the rejection of the parent application under §§ 101 and 112. With regard to § 101, the court noted the disclosure of utility in the parent specification: “{The claimed compounds} are known to be useful inhibitors of cell division, particularly with regard to providing temporary remissions of acute leukemia. The main object of the present invention is to provide new and useful compositions which modify the reactions of the known mercaptopurines so as to extend their range of usefulness particularly in regard to the absence of toxic side effects. It has now been found that certain S-substituted derivatives have a greater therapeutic index, and, as a result, an extended range of usefulness. The compounds are likewise useful in the inhibition of lactic acid bacteria and for their bacteriostatic action.†Id. at 86.
The examiner had rejected this statement of utility “in the absence of clear and convincing proof that the composition is safe, effective and reliable for human beings.†Id. at 86. The court reversed, finding the above statement of utility sufficient to satisfy § 101. The court noted that it is “unnecessary to prove safety, effectiveness and reliability in the treatment of human beings, where the specification made no express mention of human utility and where the applicant's immediate aim appeared to be the treatment of animals.†Id at 87. Finding no express mention of utility with respect to humans which would require proof, the court then noted that “while the examiner might have been justified in calling for proof that the claimed compounds were effective in treating animals . . . no such demand was made.†Id. Thus, the court found that the above statements satisfied the utility requirement of § 101.
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Thursday 09 of October, 2008 13:31:31 GMT by Unknown
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Thursday 09 of October, 2008 13:31:31 GMT by Unknown