Appeal No. 2003-2017 Page 10 Application No. 09/802,116 first instance whether the compounds are—or are not—in fact useful or possess useful properties, and to ascertain what those properties are.” Id. at 942, 153 USPQ at 53. The Kirk court held that an earlier CCPA decision, holding that a chemical compound meets the requirements of § 101 if it is useful to chemists doing research on steroids, had effectively been overruled by Brenner. “There can be no doubt that the insubstantial, superficial nature of vague, general disclosures or arguments of ‘useful in research’ or ‘useful as building blocks of value to the researcher’ was recognized, and clearly rejected, by the Supreme Court” in Brenner. See Kirk, 376 F.2d at 945, 153 USPQ at 55. More recently, in In re Ziegler, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993), the Federal Circuit considered the degree of specificity required to show utility for a claim to polypropylene. The U.S. application on appeal in Ziegler claimed priority to a German application filed in 1954. “In the German application, Ziegler disclosed only that solid granules of polypropylene could be pressed into a flexible film with a characteristic infrared spectrum and that the polypropylene was ‘plastic-like.’” Id. at 1203, 26 USPQ2d at 1605. “Ziegler did not assert any practical use for the polypropylene or its film, and Ziegler did not disclose any characteristics of the polypropylene or its film that demonstrated its utility.” Id. The court held that the German application did not satisfy the requirements of § 101 and therefore could not be relied on to overcome a rejection based on an intervening reference. See id., 26 USPQ2d at 1606. “[At] best, Ziegler was on the way to discovering a practical utility for polypropylene atPage: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 NextLast modified: November 3, 2007