Appeal No. 2004-1346 Page 9
Application No. 08/971,338
research on steroids, had effectively been overruled by Brenner. “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” in
Brenner. See Kirk, 376 F.2d at 945, 153 USPQ at 55.
More recently, in In re Ziegler, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir.
1993), the Federal Circuit considered the degree of specificity required to show
utility for a claim to polypropylene. The U.S. application on appeal in Ziegler
claimed priority to a German application filed in 1954. “In the German
application, Ziegler disclosed only that solid granules of polypropylene could be
pressed into a flexible film with a characteristic infrared spectrum and that the
polypropylene was ‘plastic-like.’” Id. at 1203, 26 USPQ2d at 1605. “Ziegler did
not assert any practical use for the polypropylene or its film, and Ziegler did not
disclose any characteristics of the polypropylene or its film that demonstrated its
utility.” Id. The court held that the German application did not satisfy the
requirements of § 101 and therefore could not be relied on to overcome a
rejection based on an intervening reference. See id., 26 USPQ2d at 1606. “[At]
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.” Id., 26 USPQ2d at 1605.
On the other hand, the CCPA reversed a rejection for lack of utility in In re
Jolles, 628 F.2d 1322, 206 USPQ 885 (CCPA 1980). The applicant in Jolles
claimed pharmaceutical compositions that were disclosed to be useful in treating
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