Appeal No. 2000-1929
Application No. 08/019,297
protein. The claimed, purified complexes themselves, however, are not useful in
carrying out either of these processes.
That is, a person of ordinary skill in the art, starting with a quantity of
purified immune complex, cannot use that complex in a diagnostic method, or in
a method of purifying HIV protein. Once the complex is formed, as the examiner
has pointed out, the only use for it that is disclosed in the specification is in
detecting it, either by precipitation or by reaction with a secondary antibody. A
product does not have patentable utility merely because its presence can be
detected using an appropriate assay. See, e.g., Brenner v. Manson, 383 U.S.
519, 535, 148 USPQ 689, 696 (1966) (“potential role as an object of use-testing”
insufficient to show utility under § 101); In re Kirk, 376 F.2d 936, 949, 153 USPQ
48, 55 (CCPA 1967) (“There can be no doubt that the insubstantial, superficial
nature of vague, general disclosures or arguments of ‘useful in research’ or
‘useful as building blocks of value to the researcher’ was recognized, and clearly
rejected, by the Supreme Court.” (citing Brenner v. Manson)). See also In re
Ziegler, 992 F.2d 1197, 1203, 26 USPQ2d 1600, 1605 (Fed. Cir. 1993) (Utility for
polymer not established by disclosure that polymer was plastic-like. “[A]t best,
Ziegler was on the way to discovering a practical utility for polypropylene at the
time of the filing of the German application; but in that application Ziegler had not
yet gotten there.”).
Once the antibody and viral protein have associated to form the claimed
complex, the complex can be used in the disclosed methods of diagnosis or
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