Appeal No. 2004-1761 Page 8
Application No. 10/044,807
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 research on
steroids, had effectively been overruled by Brenner. “There can be no doubt that the
insubstantial, superficial nature of vague, general disclosures or arguments of ‘useful in
research’ or ‘useful as building blocks of value to the researcher’ was recognized, and
clearly rejected, by the Supreme Court” in Brenner. See Kirk, 376 F.2d at 945, 153
USPQ at 55.
More recently, in In re Ziegler, 992 F.2d 1197, 26 USPQ2d 1600 (Fed. Cir. 1993),
the Federal Circuit considered the degree of specificity required to show utility for a
claim to polypropylene. The U.S. application on appeal in Ziegler claimed priority to a
German application filed in 1954. “In the German application, Ziegler disclosed only
that solid granules of polypropylene could be pressed into a flexible film with a
characteristic infrared spectrum and that the polypropylene was ‘plastic-like.’” Id. at
1203, 26 USPQ2d at 1605. “Ziegler did not assert any practical use for the
polypropylene or its film, and Ziegler did not disclose any characteristics of the
polypropylene or its film that demonstrated its utility.” Id. The court held that the
German application did not satisfy the requirements of § 101 and therefore could not be
relied on to overcome a rejection based on an intervening reference. See id., 26
USPQ2d at 1606. “[At] best, Ziegler was on the way to discovering a practical utility for
polypropylene at the time of the filing of the German application; but in that application
Ziegler had not yet gotten there.” Id., 26 USPQ2d at 1605.
On the other hand, the CCPA reversed a rejection for lack of utility in In re Jolles,
628 F.2d 1322, 206 USPQ 885 (CCPA 1980). The applicant in Jolles claimed
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