Ex Parte Donoho et al - Page 7


                 Appeal No. 2003-1794                                                         Page 7                   
                 Application No. 09/804,969                                                                            

                 monopoly is the benefit derived by the public from an invention with substantial                      
                 utility.  Unless and until a process is refined and developed to this point—where                     
                 specific benefit exists in currently available form—there is insufficient justification               
                 for permitting an applicant to engross what may prove to be a broad field.”   Id. at                  
                 534-35, 148 USPQ at 695.                                                                              
                        The Court considered and rejected the applicant’s argument that                                
                 attenuating the requirement of utility “would encourage inventors of new                              
                 processes to publicize the event for the benefit of the entire scientific community,                  
                 thus widening the search for uses and increasing the fund of scientific                               
                 knowledge.”  The Court noted that, while there is value to encouraging                                
                 disclosure, “a more compelling consideration is that a process patent in the                          
                 chemical field, which has not been developed and pointed to the degree of                             
                 specific utility, creates a monopoly of knowledge which should be granted only if                     
                 clearly commanded by the statute.  Until the process claim has been reduced to                        
                 production of a product shown to be useful, the metes and bounds of that                              
                 monopoly are not capable of precise delineation.  It may engross a vast,                              
                 unknown, and perhaps unknowable area.  Such a patent may confer power to                              
                 block off whole areas of scientific development.”   Id. at 534, 148 USPQ at 695.                      
                        The Court took pains to note that it did not “mean to disparage the                            
                 importance of contributions to the fund of scientific information short of the                        
                 invention of something ‘useful,’” and that it was not “blind to the prospect that                     
                 what now seems without ‘use’ may tomorrow command the grateful attention of                           
                 the public.”   Id. at 535-36, 148 USPQ at 696.  Those considerations did not sway                     





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