Appeal No. 2004-1040 Page 8
Application No. 09/770,643
derivatives said to have valuable biological properties and to be of value “in the
furtherance of steroidal research and in the application of steroidal materials to
veterinary or medical practice.” Id. at 938, 153 USPQ at 50. The claims had been
rejected for lack of utility. In response, the applicants submitted an affidavit which
purportedly “show[ed] that one skilled in the art would be able to determine the
biological uses of the claimed compounds by routine tests.” Id. at 939, 153 USPQ at
51.
The court held that “nebulous expressions [like] ‘biological activity’ or ‘biological
properties’” did not adequately convey how to use the claimed compounds. Id. at 941,
153 USPQ at 52. Nor did the applicants’ affidavit help their case: “the sum and
substance of the affidavit appear[ed] to be that one of ordinary skill in the art would
know ‘how to use’ the compounds to find out in the 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
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