Appeal No. 2003-1794 Page 24
Application No. 09/804,969
Under Appellants’ rule, therefore, it would seem that a polynucleotide
would be patentable if it was adequately described in the specification and was
not disclosed or suggested in the prior art. This standard, however, is not the
one set by Congress, which requires that a patentable invention also be useful
and fully enabled, nor is it the standard that has been consistently applied by the
courts.
Summary
The patent system is based on a balancing of interests. “Patents . . . are
meant to encourage invention by rewarding the inventor with the right, limited to
a term of years fixed by the patent, to exclude others from the use of his
invention. . . . But in rewarding useful invention, the ‘rights and welfare of the
community must be fairly dealt with and effectually guarded.’ Kendall v. Winsor,
21 How. 322, 329 (1859). To that end the prerequisites to obtaining a patent are
strictly observed. . . . To begin with, a genuine ‘invention’ or ‘discovery’ must be
demonstrated ‘lest in the constant demand for new appliances the heavy hand of
tribute be laid on each slight technological advance in an art.’” Sears, Roebuck &
Co. v. Stiffel Co., 376 U.S. 225, 230, 140 USPQ 524, 527 (1964).
The basic quid pro quo of the patent system requires disclosure of an
invention having substantial utility. Appellants’ disclosure in this case does not
provide a specific benefit in currently available form, and therefore lacks the
substantial utility required by 35 U.S.C. § 101. The examiner’s rejections under
35 U.S.C. §§ 101 and 112, first paragraph, are affirmed.
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