6. In connection with the utility of an invention described in a patent application, which of
the following conforms to proper USPTO practice and procedure?
(A) A deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C.
§ 112, first paragraph.
(B) To overcome a rejection under 35 U.S.C. § 101, it must be shown that the claimed
device is capable of achieving a useful result on all occasions and under all
conditions.
(C) A claimed invention is properly rejected under 35 U.S.C. § 101 as lacking utility
if the particular embodiment disclosed in the patent lacks perfection or performs
crudely.
(D) To overcome a rejection under 35 U.S.C. § 101, it is essential to show that the
claimed invention accomplishes all its intended functions.
(E) A claimed invention lacks utility if it is not commercially successful.
6. ANSWER: The most correct answer is (A). As stated in MPEP § 2107.01 (IV). A
deficiency under 35 U.S.C. § 101 also creates a deficiency under 35 U.S.C. § 112, first
paragraph. See In re Brana, 51 F.3d 1560, 34 USPQ2d 1436 (Fed. Cir. 1995); In re Jolles, 628
F.2d 1322, 1326 n.10, 206 USPQ 885, 889 n.11 (CCPA 1980); In re Fouche, 439 F.2d 1237,
1243, 169 USPQ 429, 434 (CCPA 1971) (“If such compositions are in fact useless, appellant’s
specification cannot have taught how to use them.”). (B) is not correct. MPEP § 2107 (II), and
see Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401,
1412 (Fed. Cir. 1992); and E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247,
1260 n.17, 205 USPQ 1, 10 n.17 (8th Cir. 1980). (C), (D) and (E) are not correct. MPEP § 2107
(II), and see E.I. du Pont De Nemours and Co. v. Berkley and Co., 620 F.2d 1247, 1260 n.17,
205 USPQ 1, 10 n.17 (8th Cir. 1980).
I agree with this answer but in real life I guess such a situation arises only when there is a specific rejection of “utility” under 101, as opposed to other type of 101 rejection (like the non-statutory type rejection), and then 101 is followed by 112 (1), not always.
Any thoughts anyone?
I suppose I agree with you. This particular type of rejection assumes that there is no utility of invention, even though the invention might comply with one of the statutory classes: machine, manufacture, composition of matter, process. However, you can imagine a case where the invention has utility, but is rejected under 101 because it is not a machine, manufacture, composition of matter, or process. In that case, a rejection under 112(1) would not necessarily follow, unless the specification is independently non-enabling.