Ex Parte Friddle et al - Page 7


                Appeal No. 2005-0731                                                                        Page 7                             
                Application No. 09/974,712                                                                                                     

                ‘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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