Appeal No. 2004-1761 Page 7
Application No. 10/044,807
‘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 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.
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