Appeal from rejection by USPTO Board of Appeals for lack of utility. The invention at issue was a stable solution of thiobarbituric acid compound having anesthetic and hypnotic properties. During examination, the applicants had submitted an affidavit which demonstrated safety in laboratory animal tests. The examiner and the board rejected the claims for lack of utility because 1) the compound could be used in humans, 2) there was doubt about the safety of the compound in humans, and 3) safety needed to be established in human tests. As the court stated “{t}he proposition of law here involved is that if appellants’ solutions are not ‘safe’ for the alleged use, they lack the utility required by 35 U.S.C. § 101.†Id. at 251.
The court reversed the board, finding sufficient utility. First, the court found that the scope of the application did involve use in humans, despite the specification not actually alleging use in humans, based on discussions of the uses of similar compositions in reference works and the knowledge of one skilled in the art. See id. at 252-53. Second, the court found that sufficiently safety in humans had been demonstrated for a finding of utility to be proper.
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Thursday 06 of November, 2008 23:09:07 GMT by Unknown
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