Brenner v. Manson
383 U.S. 519 (1966)

Annotate this Case

U.S. Supreme Court

Brenner v. Manson, 383 U.S. 519 (1966)

Brenner v. Manson

No. 58

Argued November 17, 1965

Decided March 21, 1966

383 U.S. 519

Syllabus

In December 1957 Ringold and Rosenkranz applied for a patent on an allegedly novel process for making certain steroids, claiming priority as of December, 1956. A patent issued thereon in 1959. In January, 1960, respondent filed an application to patent the same process, asserting that he had discovered it prior to December, 1956, and requesting that an "interference" be declared to test the issue of priority. Respondent's application was denied by a Patent Office examiner, the Board of Appeals affirming, for failure "to disclose any utility for" the compound produced by the process. The Court of Customs and Patent Appeals (CCPA) reversed, holding that, "where a claimed process produces a known product, it is not necessary to show utility for the product" as long as it is not detrimental to the public interest.

Held:

1. This Court has jurisdiction under 28 U.S.C. § 1256 to review upon petition of the Commissioner of Patents patent decisions of the CCPA. Pp. 383 U. S. 523-528.

2. The Patent Office properly may refuse to declare an "interference" on the ground that the application therefor fails to disclose a prima facie case of patentability. P. 383 U. S. 528, n 12.

3. The practical utility of the compound produced by a chemical process is an essential element in establishing a prima facie case for the patentability of the process. Pp. 383 U. S. 528-536.

(a) One may patent only that which is useful. Pp. 383 U. S. 528-529, 383 U. S. 535.

(b) Respondent has not provided any basis for overturning the determination of the Patent Office that the utility requirement was not satisfied in this case by reference to the alleged utility of an adjacent homologue. Pp. 383 U. S. 531-532.

(c) The requirement that a chemical process be useful is not satisfied by a showing that the compound yielded belongs to a class of compounds which scientists are screening for possible uses. Pp. 383 U. S. 532-536.

Page 383 U. S. 520

(d) Nor is the utility requirement for chemical processes satisfied by a showing that the process works, i.e., yields the intended product. Pp. 383 U. S. 532-536.

52 C.C.P.A.(Pat.) 739, 333 F. 2d 234, reversed.

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