Appeal No. 2004-1369 Page 6
Application No. 08/966,233
was a claim to “a chemical process which yields an already known product
whose utility—other than as a possible object of scientific inquiry—ha[d] not yet
been evidenced.” Id. at 529, 148 USPQ at 693. The Patent Office had rejected
the claimed process for lack of utility, on the basis that the product produced by
the claimed process had not been shown to be useful. See id. at 521-22, 148
USPQ at 690. On appeal, the Court of Customs and 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. 5
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
5 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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