Appeal No. 2005-0731 Page 5
Application No. 09/974,712
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
Answer, page 3. Therefore, our conclusion with respect to the § 101 issue also applies to the § 112
issue.
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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