Appeal 2007-1139
Application 10/052,664
The Examiner bears the initial burden of showing that a claimed
invention lacks patentable utility. See In re Brana, 51 F.3d 1560, 1566, 34
USPQ2d 1436, 1441 (Fed. Cir. 1995). (“Only after the PTO provides
evidence showing that one of ordinary skill in the art would reasonably
doubt the asserted utility does the burden shift to the applicant to provide
rebuttal evidence sufficient to convince such a person of the invention’s
asserted utility.”).
The Court of Appeals for the Federal Circuit addressed the utility
requirement in In re Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir.
2005). The Fisher court interpreted Brenner v. Manson, 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 prove 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 the claimed
invention can be used to provide a well-defined and particular benefit to the
public.” Id.
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