In re Watson

Name

In re Watson

Cite

517 F.2d 465

Year

1975

Bluebook cite

In re Watson, 517 F.2d 465 (C.C.P.A. 1975).

Author

URL

517 F.2d 465

Item Type

case

Summary

Appeal of rejection by USPTO Board of Appeals. Invention at issue related to oral compositions containing germicides. The compositions allegedly produced a longer germicidal effect in the mouth through the inclusion of water-insoluble particles, preferably plastics, which had been pretreated with a germicide. The examiner had rejected the claims under 35 U.S.C. §§ 101, 102, and 112. With regard to the § 101 utility rejection, the examiner gave three reasons for finding a lack of utility. First, the examiner found that the art did not recognize the applicant’s claimed utility of the beneficial effects resulting from the destruction of germs in the mouth. The examiner cited a number of references to support this point, which claimed that reducing bacteria in the mouth may do more harm than good. Second, the examiner found that “there is no rule to predict the efficacy of a microbicide in various plastics.” Id. at 469. Finally, the examiner found a lack of safety in the claimed invention, citing references that taught that the destruction of bacteria in the mouth can lead to oral moniliasis, which can lead to death. The board affirmed the § 101 rejection, specifically citing a lack of proof of safety. Id. at 472.

The court reversed the § 101 rejection. The court first noted that the examiner, by finding that the effects of the invention in the mouth were not beneficial, had conceded that the invention was operable. Id at 472. The court went on to find, based on the applicant’s rebuttal evidence, that the weight of the evidence overcame the examiner’s first grounds for rejection. The court further found the references relied on by the examiner for the second ground of rejection to be irrelevant. Finally, with regard to the third ground of rejection, lack of safety, the court reversed the examiner’s rejection and explicitly upheld In re Anthony, 414 F.2d 1383 (C.C.P.A. 1969).

Excerpts and Summaries

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Saturday 18 of October, 2008 20:36:38 GMT
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Saturday 18 of October, 2008 20:36:38 GMT
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