Appeal of rejection by PTO Board of Appeals. The invention at issue related to compositions useful “against congestions in the lymphatic system.†The examiner rejected the claims for lack of utility under § 101. The examiner argued, and the board agreed, that “the expression ‘lymphatic congestions’ is undefined in the specification and does not appear to define a specific condition, but rather to describe a symptom which can be associated with an extremely large number of pathological conditions of varying etiology. . . . {B}ecause of the wide number of possible diseases involved, some of which are known to be extremely therapy resistant, the utility disclosed is inherently incredible.†Id. at 1157. The examiner found, for example, that the treatment of cancer was contemplated by the disclosure.
The court reversed. First, the court redefined “lymphatic congestions,†finding that the invention was “intended only for treatment of congestions or stoppages in the lymph system.†Id. at 1158. The court based this conclusion on the fact that the “specification contains fifteen examples of such treatment. There is no mention of use in treating cancer.†Id. Additionally, the court based this conclusion on the dictionary definitions of “congestion†and “lymphatic.†The court, in rejecting the conclusion of the examiner and board, noted that the “compositions are directed at stimulation of the circulation in the lymph system, which is not the same as treatment of the disease which caused the congestion in the lymph system or resulted from such congestion.†Id.
Thus, having redefined “lymphatic congestions,†the court proceeded to find the alleged utility of the invention “against congestions in the lymphatic system†to not be inherently incredible. Id. at 1159. Thus, the court wrote that “where the assertion of usefulness appears to be believable on its face, the disclosed utility will be accepted as accurate.†Id. Further, the court found ample evidence of utility based on various affidavits.
The court also addressed allegations that the compositions included toxic ingredients, “such toxicity demonstrating a lack of safety that is incompatible with utility under section 101.†Id. at 1159. The court rejected this argument. Citing In re Anthony, 414 F.2d 1383 (C.C.P.A. 1969), the court noted that only a minimal level of safety is necessary for a finding of utility under § 101. The court stated that it was “satisfied that appellant's specification and affidavits are adequate to establish this minimum level of safety, since they demonstrate that when the claimed compositions are used properly, there are no harmful side effects.†Id. at 1160.
Excerpts and Summaries
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Thursday 09 of October, 2008 14:22:49 GMT by Unknown
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Thursday 09 of October, 2008 14:22:49 GMT by Unknown