Appeal No. 2005-0792 Page 5
Application No. 09/750,373
patentable utility. See In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441
(Fed. Cir. 1995) (“Only after the PTO provides evidence showing that one of
ordinary skill in the art would reasonably doubt the asserted utility does the
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.
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