Appeal No. 2005-0792 Page 11
Application No. 09/750,373
were sufficient to satisfy § 101; usefulness in patent law does not require that the
invention be ready to be administered to humans. See id. at 1567, 34 USPQ2d
at 1442.
Several lessons can be drawn from Brenner and its progeny. First,
§ 101’s requirement that an invention be “useful” is not to be given its broadest
reach, such that little or nothing of a chemical nature would be found to lack
utility. See Brenner, 383 U.S. at 530, 148 USPQ at 694. Thus, not every “use”
that can be asserted will be sufficient to satisfy § 101. For example, the steroid
compound at issue in Brenner was useful as a possible object of scientific
inquiry, and the polypropylene claimed in Ziegler was useful for pressing into a
flexible film, yet both lacked sufficient utility to satisfy § 101. See Brenner, 383
U.S. at 529, 148 USPQ at 696; Ziegler, 992 F.2d at 1203, 26 USPQ2d at 1605.
Rather than setting a de minimis standard, § 101 requires a utility that is
“substantial”, i.e., one that provides a specific benefit in currently available form.
Brenner, 383 U.S. at 534-35, 148 USPQ at 695. This standard has been found
to be met by pharmaceutical compositions shown to be useful in mouse models
and in humans for treating acute myeloblastic leukemia (Jolles, 628 F.2d at
1327-28, 206 USPQ at 891); by evidence showing successful in vitro testing
supplemented by similar in vitro and in vivo activities of structurally similar
compounds (Cross, 753 F.2d at 1051, 224 USPQ at 748); and by evidence
showing in vivo antitumor activity in mice, combined with a disclosure that the
claimed compounds had higher antitumor activity than a related compound
known to have antitumor activity (Brana, 51 F.3d at 1567, 34 USPQ2d at 1442).
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007