Appeal 2007-2953
Application 10/175,749
We agree with the Examiner that Appellants have not disclosed a
patentable utility for the claimed polypeptide. Section 101 requires a utility
that is both substantial and specific. See In re Fisher, 421 F.3d 1365, 1371,
76 USPQ2d 1225, 1229 (Fed. Cir. 2005). The Fisher 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 claimed invention can
be used to provide a well-defined and particular benefit to the public.” Id.
Appellants argue that “the law does not require that an invention
provide an immediate benefit to the public in order to satisfy the utility
requirement. Any reasonable use asserted by Applicants that can be viewed
as providing a public benefit should be accepted as sufficient with regard to
the requirement of ‘substantial’ utility.” (Br. 9.)
Appellants’ asserted definition of “substantial utility” conflicts with
the Federal Circuit’s definition. The Fisher court squarely held that a
substantial utility is one that provides a “significant and presently available
benefit to the public.” 421 F.3d at 1371, 76 USPQ2d at 1230 (emphasis
added). We therefore reject Appellants’ argument that no immediate benefit
must be shown to meet the requirements of § 101.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013