In re Buting

In re Buting
418 F.2d 540
Bluebook cite
In re Buting, 418 F.2d 540 (C.C.P.A. 1969).
418 F.2d 540
Item Type
Appeal from rejection by USPTO Board of Appeals. The invention at issue related to a group of compounds claimed to be effective in treating seven types of cancer in humans. As proof of this asserted utility, the applicants presented the following clinical test evidence: successful treatment in mice of a spectrum of cancers using two of the claimed compositions, and successful treatment in humans of 2 types of cancer with one of the claimed compositions. The applicant admitted that the asserted utility was directed to the treatment of humans. Thus, the examiner found it “unapparent that one skilled in the art would accept the clinical data as statistically significant evidence that all the compounds are safe and effective in humans against all the malignant diseases specified in the claims.” Id. at 542. The board affirmed, requiring clear and convincing evidence of utility for the claimed purpose, i.e. treatment in humans.

The court affirmed. First, the court clarified that the issue here “concerns degree of proof, not the statutory sufficiency of the utility asserted.” Id. at 543. The court then stated that while “tests demonstrating effectiveness of compounds in treating diseases in animals . . . are not to be disregarded, it is clear that such tests must be viewed with respect to the utility asserted.” Id. at 543. Thus, the court considered the evidence of successful treatment in humans and held that this evidence of success, with one compound in the treatment of two types of cancer, was not “commensurate with the broad scope of utility asserted and claimed, viz. that of treating seven types of cancer with several compounds. Rather, we think it incumbent upon an appellant either to limit his claims to the area where utility has not been properly challenged or to submit evidence refuting that challenge.” Id. at 544.

Excerpts and Summaries

Sunday 19 of October, 2008 16:39:31 GMT
by Unknown
Friday 09 of October, 2009 14:08:48 GMT
by Michael Risch

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