Appeal No. 2006-0732 Page 4
Application No. 10/060,974
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., 76 USPQ2d at 1230.
The court held that a specific utility is “a use which is not so vague as to be
meaningless.” Id. In other words, “in addition to providing a ‘substantial’ utility, an
asserted use must show that that claimed invention can be used to provide a well-
defined and particular benefit to the public.” Id.
The Fisher court held that none of the uses asserted by the applicant in that case
were either substantial or specific. The uses were not substantial because “all of Fisher’s
asserted uses represent merely hypothetical possibilities, objectives which the claimed
ESTs, or any EST for that matter, could possibly achieve, but none for which they have
been used in the real world.” Id. at 1373, 76 USPQ2d at 1231. “Consequently, because
Fisher failed to prove that its claimed ESTs can be successfully used in the seven ways
disclosed in the ‘643 application, we have no choice but to conclude that the claimed
ESTs do not have a ‘substantial’ utility under § 101.” Id. at 1374, 76 USPQ2d at 1232.
“Furthermore, Fisher’s seven asserted uses are plainly not ‘specific.’ Any EST
transcribed from any gene in the maize genome has the potential to perform any one of
the alleged uses. . . . Nothing about Fisher’s seven alleged uses set the five claimed
ESTs apart from the more than 32,000 ESTs disclosed in the ‘643 application or indeed
from any EST derived from any organism. Accordingly, we conclude that Fisher has only
disclosed general uses for its claimed ESTs, not specific ones that satisfy § 101.” Id.
Answer, page 6. Therefore, our conclusion with respect to the § 101 issue also applies to the § 112
issue.
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