Appeal No. 2003-2017 Page 8
Application No. 09/802,116
other.” Id. at 532, 148 USPQ at 695. The Court concluded that “[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. 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.
“would apply equally to the patenting of the product produced by the process.” Id. at 535, 148
USPQ at 695-96.
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