193-237

I. Chapter 3 - Utility
A. Useful - Introduction
1. Section 101
2. Section 112
3. The invention has to do something
4. Three major issues
a) Beneficial Utility
(1) If it does what it is supposed to do, is that something that
society wants?
b) Substantial or Practical utility
(1) Substantially enough to warrant a patent
(2) Very difficult abstract concept
c) Credible evidence
(1) Inventor must show the utility of the claimed invention
5. Procedural Considerations
a) Patent applicant’s assertions of utility and operability are viewed
as presumptively correct, and the PTO has the initial burden of
producing evidence that would reasonably doubt the asserted
utility and operability of the claimed invention
B. Beneficial Utility
1. Lowell v. Lewis
a) All the law requires is that the invention should not be frivolous or
injurious to the well-being, good policy, or sound morals of society
b) “Useful” is a contradistinction to mischievous or immoral
2. Note
a) The law does not look to the degree of utility, it requires only that it
is capable of use - and the use is moral and matches policy
3. “Sufficiently Useful and Important
4. Juicy Whip, Inc. v. Orange Bang, Inc.
a) Patent for a juice dispenser, where the liquid on display is not
what the customer is actually drinking. Instead the liquid is stored
and dispersed below
b) The display attracts customers, but the displayed liquid is at risk of
bacterial contamination
c) Issue: is the deceptive nature of the invention harmful?
(1) Was it immoral or injurious?
d) Reasoning:
(1) If the inventive quality is for deception alone, it cannot be
patentable
(2) Imitation has utility in itself - cubic zirconium
(3) That fact that it misleads the customers does not rob it of
its utility
 (4) It is not the job of the USPTO nor the courts to judge sales
practices - FTC and FDA can do that
(5) Patent law should not displace the Police powers of the
States
e) Notes:
(1) Human beast hybrid - not patentable. Fails the public
policy and morals
C. Substantial, Practical, and Specific Utility
1. Brenner v. Manson
a) Novel Patent for a known steroid
b) Months later Manson filed a patent application for the same
steroid.
(1) In order to validate his patent, and invalidate the previous
one, he had to prove that he had created his process and
establish the utility for it
c) Three arguments:
(1) His process has a specific utility which would entitle him to
pursue a patent even under the PAtent Office’s reading
(2) Any process is “useful” within the meaning of Section 101 if
it produces a compound whose potential usefulness is
under investigation by serious scientific researchers
(3) A novel chemical process is patentable so long as it yields
the intended product ans so long as the product is not itself
detrimental
d) Holding: disagree
(1) Would not overrule the PTO because the claimant did not
prove that there was a guarantee that the adjacent
homologues have the same utility
e) Main Issues:
(1) Is a chemical process “useful” within the meaning of 101
because it worked - i.e. produces the intended product?
(2) Or because the compound yielded belongs to a class of
compounds now the subject of serious scientific
investigation
f) “We believe a more compelling consideration is that a process
patent in the chemical field, which has not been developed and
pointed to the degree of specific utility, creates a monopoly of
knowledge which should be granted only if clearly commanded by
the statute.”
g) “A Patent is not a hunting license. It is not a reward for the
search, but compensation for its successful conclusion.”
2. Notes
a) Question becomes, what do you do when a process had no
current use, but has become valuable or may become valuable
 b) Has to have utility at the time of filing
c) Who deserves the patent on a new chemical? The person who
created the chemical or the person who found a use for it?
D. In re Brana
1. Anti-tumor substances
2. Have a chemical structure that is very similar to a previously patented
structure
3. This structure new structure created better tumor reduction that the
previous compound
4. Overcame initial rejection
5. Issue:
a) Regarding pharmaceutical inventions, what must the applicant
prove regarding the practical utility or usefulness of the invention
for which patent protection is sought
6. An alleged use against this particular type of cancer is much more
specific than the vaguely intimated used rejected in Kirk
7. Issue:
a) Even though they did find a use, there applicant needed to prove
the compounds were useful for that use.
8. The PTO has the initial burden of challenging a presumptively correct
assertion of utility in the disclosure
a) Must show evidence that one of ordinary skill in the art would
reasonably doubt the asserted utility
b) Then the burden shifts to the applicant to provide evidence
sufficient to convince such a person of the invention’s asserted
utility
9. The nature of the patent applicant’s invention alone would not cause one
of skill in the art to reasonably doubt the asserted usefulness
10. The applicant showed sufficient evidence to meet the minimum
requirements of usefulness - trial studies
11. Policy - if they required so much testing to prove utility, few companies
would be able to attain patents
12. Notes:
a) Infringement proves usefulness - companies rarely if ever infringe
useless patents
E. Utility Examination Guidelines
1. “If the applicant has asserted that the claimed invention is useful for any
particular purpose and that assertion would be considered credible by a
person of ordinary skill in the art, do not impose a rejection based on lack
of utility”
F. 2001 PTO Utility Examination Guidelines
1. “Specific utility” - A utility that is specific to the subject matter claimed.
This contrasts with a general utility that would be applicable to the broad
class of invention
 2. “Substantial utility” - A utility that defines a ‘real world’ use. Utilities that
require or constitute carrying out further research to identify or reasonable
confirm a ‘real world’ context of use are not substantial utilities
G. In re Fisher
1. Facts:
a) Expressed Sequence Tags - isolated and purified nucleic acid
sequences
b) Too generic - generally applicable not to the claim ESTs but
applicable to an EST
c) Claimed ESTs lacked a substantial utility because there was no
known use for the proteins produced as final products resulting
from processes involving the claimed ESTs
(1) No ‘real world’ context
2. Discussion
a) Utility
(1) Disagreement as to the standard
(2) Argues for non-frivolous, or injurious to the well-being,
good policy, or good morals of society. - Lowell
(3) Claim the claimed ESTs provide seven specific and
substantial uses
(4) Government contends that the arguments for ESTs
patentability only assert potential uses. Same patent could
apply to all ESTs of any organism
(a) Merely starting points for research
3. Holding: agree that none of the seven assorted uses meet the utility
requirement
a) Require a claimed invention have a specific and substantial utility
to satisfy 101
4. Rule:
a) Claim must show that the invention has a significant and presently
available benefit to the public
b) Cannot patent all the potential of research prospects of certain
discoveries
c) “Specific” - an application must disclose a use which is not so
vague as to be meaningless
5. Reasoning:
a) The lower court did not apply an unfair test
(1) Applied the test from the Guidelines and set forth in
Brenner
b) It is a patent to study the DNA strands in order to understand the
maize genome - the functions of the underlying genes
c) Additionally could not prove that the ESTs can actually achieve
the 7 different uses it claims
d) The 7 uses are not “specific”
 e) Furthermore, none of these uses differentiate the ESTs claimed
from the 32,000 other ESTs
f) This grant would constitute a hunting license - a grant to gain
further information about the underlying genes and the proteins
encoded for by those genes
g) No evidence of commercial success of these particular ESTs
h) Policy - granting a patent on the ESTs without proof of utility would
discourage research, delay scientific discovery, and thwart
progress in the “useful arts”
(1) May or may not be valid. Should not be valid
(2) Congress did not intend to take these into consideration
when assessing the utility of a patent.
(a) Or the workload of the PTO
6. Holding: Agree with the board. Not a substantial amount of evidence