Appeal No. 2004-1369 Page 7
Application No. 08/966,233
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.
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
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