Appeal No. 2006-1035 Page 6
Application No. 09/925,140
383 U.S. 519, 148 USPQ 689 (1966), as rejecting a “de minimis view of utility.”
421 F.3d at 1370, 76 USPQ2d at 1229. The Fisher court held that § 101 requires a
utility that is both substantial and specific. Id. at 1371, 76 USPQ2d at 1229. The court
held that disclosing a substantial utility means “show[ing] 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., 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 the uses asserted by the applicant in that case were
neither substantial nor 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
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