Appeal No. 2004-1040 Page 7
Application No. 09/770,643
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 the Court, however, because “a patent is not
a hunting license. It is not a reward for the search, but compensation for its successful
conclusion.” Id.
Subsequent decisions of the CCPA and the Court of Appeals for the Federal
Circuit have added further layers of judicial gloss to the meaning of § 101’s utility
requirement. The first opinion of the CCPA applying Brenner was In re Kirk, 376 F.2d
936, 153 USPQ 48 (CCPA 1967). The invention claimed in Kirk was a set of steroid
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