Ex Parte Friddle et al - Page 8


                Appeal No. 2005-0731                                                                        Page 8                             
                Application No. 09/974,712                                                                                                     

                         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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