Appeal No. 1996-0729
Application No. 07/859,572
In Nelson, the CCPA addressed the practical utility requirement in the context of an
interference proceeding. Bowler challenged the patentability of the invention claimed by Nelson on the
basis that Nelson had failed to sufficiently and persuasively disclose a practical utility for the invention,
i.e., a class of synthetic prostaglandins modeled on naturally occurring prostaglandins. Naturally
occurring prostaglandins are bioactive compounds which had a recognized pharmacological value (e.g.,
the ability to raise or lower blood pressure, etc.) at the time of Nelson’s application. Nelson’s
specification included the results of tests demonstrating the bioactivity of his new substituted
prostaglandins relative to the bioactivity of naturally occurring prostaglandins. The court concluded that
Nelson had satisfied the practical utility requirement in identifying the synthetic prostaglandins as
pharmalogically active compounds.
In Cross, the Federal Circuit affirmed a finding by the Board of Patent Appeals and
Interferences that a pharmacological utility had been disclosed in the application of one party to an
interference proceeding. The invention that was the subject of the interference count was a chemical
compound used for treating blood disorders. Cross had challenged the evidence in Iizuka’s
specification that supported the claimed utility. The Federal Circuit relied extensively on Nelson v.
Bowler in finding that Iizuka’s application had sufficiently disclosed a
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