Appeal No. 2004-1040 Page 6
Application No. 09/770,643
Patent Appeals reversed, on the basis that “where a claimed process produces a known
product it is not necessary to show utility for the product.” Id. at 522, 148 USPQ at 691.
The Brenner Court noted that although § 101 requires that an invention be
“useful,” that “simple, everyday word can be pregnant with ambiguity when applied to
the facts of life.” Id. at 529, 148 USPQ at 693. Thus,
[it] is not remarkable that differences arise as to how the test of usefulness
is to be applied to chemical processes. Even if we knew precisely what
Congress meant in 1790 when it devised the “new and useful”
phraseology and in subsequent re-enactments of the test, we should have
difficulty in applying it in the context of contemporary chemistry, where
research is as comprehensive as man’s grasp and where little or nothing
is wholly beyond the pale of “utility”—if that word is given its broadest
reach.
Id. at 530, 148 USPQ at 694.2
The Court, finding “no specific assistance in the legislative materials underlying §
101,” based its analysis on “the general intent of Congress, the purposes of the patent
system, and the implications of a decision one way or the 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.
Answer, page 7. Therefore, our conclusion with respect to the § 101 issue also applies to this § 112
issue.
2 The invention at issue in Brenner was a process, but the Court expressly noted that its holding “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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