Ex Parte LEE - Page 8


                 Appeal No.  2004-1369                                                         Page 8                  
                 Application No.  08/966,233                                                                           
                 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 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                            







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