Decision 1303 Re: Application No. 592,567
The Application was rejected by the Examiner under section 2 of the Patent Act for containing claims for which the utility could not soundly be predicted and under section 34(2) for containing claims directed to a desired result. The Commissioner held that the rejection should be reversed.
The Commissioner considered the test for sound prediction and held that there was both a factual basis and a sound line of reasoning in this case and that they were found in the disclosure of the patent. Thus, it could not agree with the Examiner’s position that the claims did not comply with section 2 of the Patent Act. The Commissioner then went on to consider a claim not objected to by the Examiner on this basis and found that it could not be soundly predicted as it did not have the promised utility across the entire scope. In considering that the argument that the patent claimed a desired result, the Commissioner held that the Examiner requiring the parameters to be “good enough to give an infallible result” was setting the bar too high. Routine uninventive experimentation is permitted. Thus, based on the disclosure there were no grounds for finding that a person of skill in the art would not be able to make the compositions achieve the results. The patent was then sent to be considered under section 43 of the Patent Act.