Interference No. 104,436 Paper 98
Shyamala v. Hillman Page żO
As the Supreme Court observed with regard to utility: 1A] patent is not a hunting
license. It is not a reward for the search, but compensation for its successful conclusion."
Brenner v. Manson,-383 U.S. 519, 536 (1966). In Manson, the inventor claimed a process for
making a steroid. The steroid so produced had no known use, but was homologous to a known
useful steroid. The inventor contended that, in addition to this homology, the process was useful
"if it produces a compound whose potential usefulness is under investigation by serious scientific
researchers". Id. at 53 1. The Court recognized these contentions as presenting "the basic
problem" for it to adjudicate. Id. at 532. The Court rejected the homology argument based on
the conceded unpredictability of the steroid art. Id. After much consideration, the Court rejected
the "potential usefulness" standard as contrary to public policy "[u]nless and until [the invention]
is refined and developed to this point-where specific benefit exists in currently available form".
Id. at 534-35.
Shyamala's invention is distinguishable from Manson's in that Shyarnala claims 1, 4, and
10 are directed to compositions and Shyamala claim 6 is directed to a method of use, while
Manson was claiming a method of making. If anything, however, Shyamala is in an even weaker
position than Manson. Manson could point to a pre-filing journal article to show that a close
homolog was known to have a utility. U. at 522. Shyarnala's evidence, by contrast, suggests that
the p38 MAPK pathway is still the subject of intense research with few concrete results-and
those results come from synthetic inhibitors completely different from Shyamala's MIR
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