(dissenting, with whom WORLEY, C. J., joins).
I disagree with the view of this case taken by the majority. Before this utility question can be properly considered, appellants’ disclosure should be consulted to determine just exactly what the asserted utility is. I think the following passage of the disclosure, which *893incidentally was not referred to by the majority, is as close as appellants come to stating a utility:
The value of the viral interfering substance is that, whereas vaccines are not only very specific in their action but do not generally confer immunity upon the subject for some two weeks, Interferon is active against a variety of viruses and not only that virus from the inactivated form of which has been used in its preparation, and furthermore shows its activity in the subject to which it is administered within a matter of only a few hours.
Appellants claim that the utility of their compound is its activity against a variety of viruses in a “subject,” thus making it a replacement for vaccines. I see nothing here that would suggest that appellants consider their compound to be merely a death potion for viruses in a test tube. On the contrary, the disclosed utility of Interferon is its activity against viruses in place of a vaccine. Are test tubes vaccinated against viruses? I think no.t. The utility here disclosed is anti-viral activity in a “subject” or in vivo as a substitute for a vaccine. Thus, I am convinced that the disclosure must be construed as an assertion of in vivo utility.
I think that the deliverance of this court in In re Novak, 306 F.2d 924, 49 CCPA 1283, has controlling impact here. In sustaining rejection of the claims for lack of proof of utility, the court said:
We observe that no evidence whatever has been presented to demonstrate that the claimed compounds have the alleged properties or will function as alleged in the specification. * * *
In our opinion, when an applicant bases utility for a claimed invention on allegations of the sort made by appellants here, unless one with ordinary skill in the art would accept those allegations as obviously valid and correct, it is proper for the examiner to ask for evidence which substantiates them. * * *
Here we are dealing with a claimed compound completely, as far as the record reveals, unknown prior to its disclosure by appellants. Its chemical constituents are not revealed. Appellants admit that there is no “real precedent for this precise type of invention * *.” In view of the rather remarkable utility asserted and the fact that the prior art provides no basis for predicting or even hinting that Interferon might have the alleged in vivo utility, it seems clear that the alleged utility could not be accepted as obviously valid and correct by one skilled in the art. I thus feel that the examiner displayed no abuse of discretion in requiring proof of the alleged utility.
I am in strong disagreement with the attempt by the majority to limit the Novak doctrine to situations such as those in In re Citron, 325 F.2d 248, 51 CCPA 852. I can think of no good reason why the examiner should be precluded from requiring proof of utility in situations such as the present one, and furthermore I can think of no good reason why the appellants should refuse to submit such proof unless they have none. The majority states that the test data required by the examiner would be “redundant.” On the contrary, it would be the only data in an application now barren of in vivo test results.
It is noted that in the application of section 101 to the claims in issue, the examiner- and the board made no distinction between the product claims and the process claims. No distinction is made by appellants in their brief or in the reasons of appeal. Here, as in In re Novak, all of the claims, both product and process, were rejected for lack of utility and disposed of on that basis, citing In re Lorenz and Wegler, 305 F.2d 875, 49 CCPA 1227, wherein the following statement is made:
The examiner and the board made no distinction between the product claims and the process claims as to the ground of rejection. While ap*894pellants filed reasons of appeal which would justify our separate consideration of both groups of claims, we construe appellants’ brief to be an abandonment of any issue as to the legality of such a rejection of the process claims. Our decision is thus necessarily limited to a consideration of the rejection solely on the validity of the rejection of the product claims.
I agree with the solicitor that our decision in In re Manson, 333 F.2d 234, 52 CCPA 739, is not apposite to the situation here presented. The legal issue presented in Manson involved an application on a new process for making a known compound. The court held that “where a claimed process produces a known product it is not necessary to show utility for the product * * The instant case involves both product and process claims where patentability is predicated on the advantages of a heretofore unknown product.
For the reasons stated, I would affirm the rejection of the board on the ground of lack of proof of utility.