Appeal No. 2004-1761 Page 6
Application No. 10/044,807
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 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
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