Appeal No. 2003-2017 Page 9
Application No. 09/802,116
The Court took pains to note that it did not “mean to disparage the
importance of contributions to the fund of scientific information short of the
invention of something ‘useful,’” and that it was not “blind to the prospect that
what now seems without ‘use’ may tomorrow command the grateful attention of
the public.” Id. at 535-36, 148 USPQ at 696. Those considerations did not sway
the Court, however, because “a patent is not a hunting license. It is not a reward
for the search, but compensation for its successful conclusion.” Id.
Subsequent decisions of the CCPA and the Court of Appeals for the
Federal Circuit have added further layers of judicial gloss to the meaning of
§ 101’s utility requirement. The first opinion of the CCPA applying Brenner was
In re Kirk, 376 F.2d 936, 153 USPQ 48 (CCPA 1967). The invention claimed in
Kirk was a set of steroid derivatives said to have valuable biological properties
and to be of value “in the furtherance of steroidal research and in the application
of steroidal materials to veterinary or medical practice.” Id. at 938, 153 USPQ at
50. The claims had been rejected for lack of utility. In response, the applicants
submitted an affidavit which purportedly “show[ed] that one skilled in the art
would be able to determine the biological uses of the claimed compounds by
routine tests.” Id. at 939, 153 USPQ at 51.
The court held that “nebulous expressions [like] ‘biological activity’ or
‘biological properties’” did not adequately convey how to use the claimed
compounds. Id. at 941, 153 USPQ at 52. Nor did the applicants’ affidavit help
their case: “the sum and substance of the affidavit appear[ed] to be that one of
ordinary skill in the art would know ‘how to use’ the compounds to find out in the
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