Appeal No. 2004-1369 Page 11
Application No. 08/966,233
most potent compounds . . ., analogous to the benefit provided by the showing of
an in vivo utility.” Id. On the facts of that case – successful in vitro testing
supplemented by similar in vitro and in vivo activities of structurally similar
compounds – the court held that in vitro activity was sufficient to meet the
requirements of § 101. See id.
The Federal Circuit confirmed in In re Brana, 51 F.3d 1560, 34 USPQ2d
1436 (Fed. Cir. 1995), that human testing is not necessary to establish utility for
a method of treatment. The invention claimed in Brana was a group of
compounds disclosed to have antitumor activity. See id. at 1562, 34 USPQ2d at
1437-38. The claimed compounds were disclosed to have higher antitumor
activity than related compounds known to have antitumor activity, and the
applicants provided declaratory evidence of in vivo activity against tumors in a
mouse model. See id., 34 USPQ2d at 1438. The court held that these data
were sufficient to satisfy § 101; usefulness in patent law does not require that the
invention be ready to be administered to humans. See id. at 1567, 34 USPQ2d
at 1442.
Several lessons can be drawn from Brenner and its progeny. First,
§ 101’s requirement that an invention be “useful” is not to be given its broadest
reach, such that little or nothing of a chemical nature would be found to lack
utility. See Brenner, 383 U.S. at 530, 148 USPQ at 694. Thus, not every “use”
that can be asserted will be sufficient to satisfy § 101. For example, the steroid
compound at issue in Brenner was useful as a possible object of scientific
inquiry, and the polypropylene claimed in Ziegler was useful for pressing into a
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