Appeal No. 2005-2207 Page 6
Application No. 09/548,933
Therefore, our conclusion with respect to the § 101 issue also applies to the § 112
issue.
The U.S. Court of Appeals for the Federal Circuit recently addressed the nature
of the § 101 utility requirement in the context of a claim to expressed sequence tags
(ESTs) - short nucleotide sequences purportedly encoding fragments of proteins of
unknown structure or function. See In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225
(Fed. Cir. 2005). Revisiting Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966),
the Fisher court interpreted it as rejecting a “de minimis view of utility” (Fisher, 421 F.3d
at 1370, 76 USPQ2d at 1229), and held that § 101 requires a utility that is both specific
and substantial (id. at 1371, 76 USPQ2d at 1229).
With respect to the requirement for a “specific” utility, the court explained that “an
application must disclose a use which is not so vague as to be meaningless.” Id. at
1371, 76 USPQ2d at 1230. The court identified “the nebulous expressions ‘biological
activity’ [and] ‘biological properties’ . . . [and] the equally obscure expression ‘useful for
technical and pharmaceutical purposes’” as examples of meaningless asserted utilities.
Id. Thus, “an asserted use must [ ] show that that claimed invention can be used to
provide a well-defined and particular benefit to the public.” Id.
With respect to the requirement for a “substantial” utility, the Fisher court
explained that “an application must show that an invention is useful to the public as
disclosed in its current form, not that it may be useful at some future date after further
research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use
must show that that claimed invention has a significant and presently available benefit
to the public.” Id. at 1372, 76 USPQ2d at 1230.
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