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2107

NUIJTEN

The specification does not clearly define “tangible” or a “computer readable medium.” The broadest reasonable interpretation of a “tangible computer readable medium” encompasses a transitory, propagating signal. Given that a medium can be both tangible and transitory, we agree with the Examiner’s finding that a “tangible computer readable medium” as broadly claimed encompasses a transitory, propagating signal. Transitory embodiments are not directed to statutory subject matter. Examples include physical but transitory forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable, that convey encoded information. In re Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir. 2007).

I.   SPECIFIC AND SUBSTANTIAL REQUIREMENTS

A.   Specific Utility

FISHER

To comply with the utility requirement of § 101, the claimed invention must “have a specific and substantial utility.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). An asserted utility is (1) specific if shows that the “claimed invention can be used to provide a well-defined and particular benefit to the public,” and (2) substantial if it shows that the “claimed invention has a significant and presently available benefit to the public.” Id.

Section 101 requires a utility that is both substantial and specific. A substantial utility requires:
show[ing] that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the “substantial” utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public.
In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

A specific utility is “a use which is not so vague as to be meaningless.” Id. In other words, “in addition to providing a ‘substantial’ utility, an asserted use must also show that [the] claimed invention can be used to provide a well-defined and particular benefit to the public.” Id. In addition, “[i]t is well established that the enablement requirement of § 112 incorporates the utility requirement of § 101.” In re Fisher, 421 F.3d at 1378.

In order to satisfy the utility requirement of 35 U.S.C. § 101, the disclosed utility must be both substantial and specific. In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). A substantial utility requires showing that the claimed invention “has a significant and presently available benefit to the public.” Id. A specific utility requires showing that “the claimed invention can be used to provide a well-defined and particular benefit to the public.” Id.

[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the “substantial” utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public. . . . in addition to providing a “substantial” utility, an asserted use must also show that the claimed invention can be used to provide a well-defined and particular benefit to the public. In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

B.   Substantial Utility

C.   Research Tools

II.   WHOLLY INOPERATIVE INVENTIONS; “INCREDIBLE” UTILITY

HARWOOD

“An inoperative invention . . . does not satisfy the requirement of 35 U.S.C. 101 that an invention be useful.” In re Harwood, 390 F.2d 985, 989 (CCPA 1968).

III.   THERAPEUTIC OR PHARMACOLOGICAL UTILITY

IV.   RELATIONSHIP BETWEEN 35 U.S.C. 112, FIRST PARAGRAPH, AND 35 U.S.C. 101

TRANSCO

“[T]he bottom line is that, no matter what term is used to describe a continuing application, that application is entitled to the benefit of the filing date of an earlier application only as to common subject matter.” Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556(Fed. Cir. 1994).

I.    THE CLAIMED INVENTION IS THE FOCUS OF THE UTILITY REQUIREMENT

II.    IS THERE AN ASSERTED OR WELL-ESTABLISHED UTILITY FOR THE CLAIMED INVENTION?

A.    An Asserted Utility Must Be Specific and Substantial

B.    No Statement of Utility for the Claimed Invention in the Specification Does Not Per Se Negate Utility

III.    EVALUATING THE CREDIBILITY OF AN ASSERTED UTILITY

A.    An Asserted Utility Creates a Presumption of Utility

LANGER

In re Langer, 503 F.2d 1380, 1391 (CCPA 1974) (“[A] specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility  requirement of § 101 for the entire claimed subject matter unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope.”).

As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is reason for one skilled in the art to question the objective truth of the statement of utility or its scope. Assuming that sufficient reason to question the statement of utility and its scope does exist, a rejection for lack of utility under § 101 will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the statement of utility and its scope as found in the specification are true.

In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974).

MARZOCCHI

In re Marzocchi, 439 F.2d 220, 224 (CCPA 1971) (“[It] is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement.”)

B.    When Is an Asserted Utility Not Credible?

IV.    INITIAL BURDEN IS ON THE OFFICE TO ESTABLISH A PRIMA FACIE CASE AND PROVIDE EVIDENTIARY SUPPORT THEREOF

V.    EVIDENTIARY REQUESTS BY AN EXAMINER TO SUPPORT AN ASSERTED UTILITY

 
Bundy
 
[T]he PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure. . . . Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility. See In re Bundy, 642 F.2d 430, 433 (CCPA 1981).

2107.03   Special Considerations for Asserted Therapeutic or Pharmacological Utilities

Further, “the PTO must do more than merely question operability - it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability.” In re Gaubert, 524 F.2d 1222, 1224-25 (CCPA 1975).

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