Appeal No. 2004-1346 Page 8
Application No. 08/971,338
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
first instance whether the compounds are—or are not—in fact useful or possess
useful properties, and to ascertain what those properties are.” Id. at 942, 153
USPQ at 53.
The Kirk court held that an earlier CCPA decision, holding that a chemical
compound meets the requirements of § 101 if it is useful to chemists doing
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