Appeal No. 2005-0731 Page 24
Application No. 09/974,712
Heller, page 698.5
The Supreme Court has warned against allowing too many “tollbooths” on
the road to innovation:
Patents . . . are meant to encourage invention by rewarding the inventor
with the right, limited to a term of years fixed by the patent, to exclude
others from the use of his invention. . . . But in rewarding useful invention,
the “rights and welfare of the community must be fairly dealt with and
effectually guarded.” Kendall v. Winsor, 21 How. 322, 329 (1859). . . . To
begin with, a genuine “invention” or “discovery” must be demonstrated
“lest in the constant demand for new appliances the heavy hand of tribute
be laid on each slight technological advance in an art.”
Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 230, 140 USPQ 524, 527 (1964).
Summary
The basic quid pro quo of the patent system requires disclosure of an invention
having substantial utility. Appellants’ disclosure in this case does not provide a specific
benefit in currently available form, and therefore lacks the substantial utility required by
35 U.S.C. § 101. The rejections for lack of utility are affirmed.
5 Heller et al., “Can patents deter innovation? The anticommons in biomedical research,” Science, Vol. 280,
pp. 698-701 (1998). Accessible online at www.sciencemag.org/cgi/content/full/280/5364/698.
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