Appeal No. 2005-0792 Page 8
Application No. 09/750,373
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.
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
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