Appeal No. 2004-1040 Page 9
Application No. 09/770,643
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 at the time of the filing of the German application; but in that application
Ziegler had not yet gotten there.” Id., 26 USPQ2d at 1605.
On the other hand, the CCPA reversed a rejection for lack of utility in In re Jolles,
628 F.2d 1322, 206 USPQ 885 (CCPA 1980). The applicant in Jolles claimed
pharmaceutical compositions that were disclosed to be useful in treating acute
myeloblastic leukemia. See id. at 1323, 206 USPQ at 886. The active ingredients in
the compositions were closely related to daunorubicin and doxorubicin, both of which
were “well recognized in the art as valuable for use in cancer chemotherapy.” Id., 206
USPQ at 887. The applicant also submitted declaratory evidence showing that eight of
the claimed compositions were effective in treating tumors in a mouse model, and one
was effective in treating humans. See id. at 1323-24, 206 USPQ at 887-88. The court
noted that the data derived from the mouse model were “relevant to the treatment of
humans and [were] not to be disregarded,” id. at 1327, 206 USPQ at 890, and held that
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