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PTAB.US: Decisions of PTAB Patent Trial and Appeal Board Updated Daily.

Monday, April 12, 2010

Monday April 12, 2010

REVERSED

1600 Biotechnology and Organic Chemistry
Ex Parte Nezu et al 10/762,154 WALSH 101/112(1) FISH & RICHARDSON PC

[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).

“It is well established that the enablement requirement of § 112 incorporates the utility requirement of § 101.” Fisher, 421 F. 3d at 1378.

Fisher, In re, 421 F.3d 1365, 76 USPQ2d1225 (Fed. Cir. 2005) . . . .. . . . . . . .2106, 2107.01

Ex Parte Schmid-Schonbein et al 11/850,169 PRATS 102(b)/103(a)/101 37 C.F.R. § 41.50(b) FISH & ASSOCIATES, PC

AFFIRMED-IN-PART

1700 Chemical & Materials Engineering
Ex Parte Chen 11/084,571 KIMLIN 103(a) HEWLETT-PACKARD COMPANY

3700 Mechanical Engineering, Manufacturing, and Products & Design

Ex Parte Ihde 10/714,200 PATE III 112(1)/102(b)/103(a) HUSCH BLACKWELL SANDERS LLP

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