Ex Parte Yu et al - Page 5


             Appeal No. 2004-1761                                                   Page 5                     
             Application No. 10/044,807                                                                        

             burden shift to the applicant to provide rebuttal evidence sufficient to convince such a          
             person of the invention’s asserted utility.”).                                                    
                   The seminal decision interpreting the utility requirement of § 101 is Brenner v.            
             Manson, 383 U.S. 519, 148 USPQ 689 (1966).  At issue in Brenner 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 694.2                                                                     




                                                                                                               
             2 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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