Appeal No. 95-1083
Application No. 08/004,444
For over 200 years, the concept of utility has occupied a central role in our
patent system. See Brenner v. Manson, 383 U.S. 519, 529, 148 USPQ 689,
693 (1966). Indeed, “[t]he basic quid pro quo contemplated by the
Constitution and the Congress for granting a patent monopoly is
the benefit derived by the public from an invention with substantial utility.”
Id. at 534, 148 USPQ at 695. Consequently, it is well established that a
patent may not be granted to an invention unless substantial or practical
utility for the invention has been discovered and disclosed. See Cross v. Iizuka,
753 F.2d 1040, 1044, 224 USPQ 739, 742 (Fed. Cir. 1985).
It was stated in Genentech Inc. v. Nova Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d
1001, 1005 (Fed. Cir. 1995):
Patent protection is granted in return for an enabling disclosure of an
invention, not for vague intimations of general ideas that may or may not be
workable. See Brenner v. Manson, 383 U.S. 519, 536, 148 USPQ 689, 696
(1966) (stating, in context of the utility requirement, that “a patent is not a
hunting license. It is not a reward for the search, but compensation for its
successful conclusion.)
Whether an issue of utility is raised under 35 U.S.C. § 101 or § 112, first paragraph, the
initial burden is on the Patent and Trademark Office to establish reasons why one skilled in
the art would not believe the objected statements of utility and/or enablement in the
specification. In re Brana 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995);
In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297 (CCPA 1974); In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
In setting forth the basis of the rejection under 35 U.S.C. § 101, the examiner
states (Answer, page 4):
[O]ne of ordinary skill would not accept the claimed utility of treating and preventing
inflammatory bowel disease, or any of the other disclosed diseases including cancer, in a
host in the absence of adequate evidence in support of the same.
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