Compound alleviating pain and curing cancer

7. On January 2, 2001, a registered practitioner filed a patent application with the USPTO

for inventor Bloc. The application includes a specification and a single claim to the invention

which reads as follows:

1. Compound Y.

In the specification, Bloc explains that compound Y is an intermediate in the chemical

manufacture of synthetic Z. With respect to synthetic Z, the specification discloses its structural

formula and further states that synthetic Z is modeled on the natural form of Z to give it the same

therapeutic ability to alleviate pain. The specification goes on to state that synthetic Z is also a

cure for cancer. On June 2, 2001, the practitioner received an Office action from the primary

examiner rejecting the claim. The claim is rejected under 35 U.S.C. 101 as being inoperative;

that is, the synthetic Z does not operate to produce a cure for cancer (i.e., incredible utility).

Bloc believes he is entitled to a patent to his compound Y. In accordance with the patent laws,

rules and procedures as related in the MPEP, how best should the practitioner reply to the

rejection of the claim?

(A) Advise Bloc that he should give up because a cure for cancer is indeed incredible

and is unproven.

(B) File a reply arguing that a cure for cancer is not incredible and he can prove it if

given the chance.

(C) File a reply arguing that whether or not a cure for cancer is incredible is

superfluous since Bloc has disclosed another utility – alleviating pain, which is

not incredible.

(D) File a reply arguing that the claim is directed to compound Y, not synthetic Z.

(E) File a reply arguing that synthetic Z is modeled on the natural form of Z.