The guidelines provide that, if the utility of the claimed invention is credible to one of ordinary skill in the art giving consideration to all the evidence of record, then the Examiner should not reject the claim for lack of utility. If, however, the Examiner considers that no utility is established, either explicitly or implicitly, or that the utility of the claimed invention is not credible, a utility rejection can be made under 35 USC 101. In order to support the rejection, the Examiner must establish a prima facie showing "that it is more likely than not that a person of ordinary skill in the art would not consider credible any utility for the claimed invention that has been asserted by the applicant. Where no utility has been asserted in the disclosure, the prima facie showing must support a finding that a person of ordinary skill would not be able to ascertain any use for the claimed invention." A prima facie showing must contain:
1) A well-reasoned statement by the Examiner that clearly sets forth the reasoning used in reaching his or her conclusions;
2) Support for factual findings relied upon by the Examiner in reaching his or her conclusions; and
3) Support for conclusions of the Examiner that evidence provided by the applicant to support an asserted utility would not be considered persuasive to a person of ordinary skill in the art.
After the Examiner establishes the prima facie showing, the applicant has the opportunity to rebut the lack of utility rejection. This may be done, inter alia, by amending the claims, supplying evidence or submitting arguments that refute the Examiner's rejection.2) Support for factual findings relied upon by the Examiner in reaching his or her conclusions; and
3) Support for conclusions of the Examiner that evidence provided by the applicant to support an asserted utility would not be considered persuasive to a person of ordinary skill in the art.
The Examiner is then to "recognize, fully consider, and respond to each of the substantive elements of the applicant's response" and the Examiner must treat as true credible statements made by an applicant and, if declarations are submitted, by the declarant unless the Examiner "can show that one of ordinary skill of the art would have a rational basis to doubt the truth of such statements."
It is expected that the guidelines will be finalized later this spring.
April 1995 Index