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REVERSED
Tech Center 3900 Central Reexamination Unit (CRU)
2165 FACEBOOK, INC. Requester and Appellant v. LEADER TECHNOLOGIES, INC. Patent Owner and Respondent 95001261 7,139,761 10/732,744 SIU 102/103 37 C.F.R. § 41.77(b) 102/103 King and Spalding LLP HUGHES, DEANDRA M original MIZRAHI, DIANE D
AFFIRMED
Tech Center 3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3623 Ex Parte Beringer et al 10285280 - (D) KIM 103 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP PATS, JUSTIN
3632 Ex Parte Shevick 10966279 - (D) STAICOVICI 102/103 HEISLER & ASSOCIATES MARSH, STEVEN M
Tech Center 3700 Mechanical Engineering, Manufacturing, and Products & Design
3752 Ex Parte Blum et al 09994860 - (D) BAHR 101 112(1) 37 C.F.R. § 41.50(b) 112(1) KILPATRICK TOWNSEND & STOCKTON LLP BOECKMANN, JASON J
The basis of the Examiner’s rejection under 35 U.S.C. § 101 is that the disclosed invention is wholly inoperative and therefore lacks credible utility.
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).
Langer, In re, 503 F.2d 1380, 183 USPQ 288 (CCPA 1974) 2107.02, 2107.03, 2124
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).
Gaubert, In re, 524 F.2d 1222, 187 USPQ 664 (CCPA 1975) 2107.03
