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In re Fisher - 421 F.3d 1365 (Fed. Cir. 2005)


Courts have used the labels "practical utility" and "real world" utility interchangeably in determining whether an invention offers a "substantial" utility. Indeed, "practical utility" is a shorthand way of attributing "real-world" value to claimed subject matter. In other words, one skilled in the art can use a claimed discovery in a manner which provides some immediate benefit to the public. It thus is clear that an application must show 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.


Dane K. Fisher and Raghunath Lalgudi (collectively "Fisher") appeal from the decision of the U.S. Patent and Trademark Office ("PTO") Board of Patent Appeals and Interferences ("Board") affirming the examiner's final rejection of the only pending claim of application Serial No. 09/619,643 (the "'643 application"), entitled "Nucleic Acid Molecules and Other Molecules Associated with Plants," as unpatentable for lack of utility under 35 U.S.C. § 101 and lack of enablement under 35 U.S.C. § 112, first paragraph. This appeal was submitted after oral argument.


Did Fisher’s patent claim of application meet the utility requirement under 35 U.S.C. § 101?




The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The Court held that none of Fisher’s seven asserted uses met the utility requirement of 35 U.S.C.S. § 101. Because the utility requirement of § 101 was not met, the Court held that Fisher was not entitled to a patent for the five claimed ESTs. First, the Board did not apply an incorrect legal standard when it made reference to a "spectrum" to differentiate between a substantial utility and an insubstantial utility. This was not a new test for assessing the utility of ESTs but rather was in conformance with the standards set forth in Brenner. Second, the claimed ESTs were mere "objects of use-testing," to wit, objects upon which scientific research could be performed with no assurance that anything useful would be discovered in the end. Moreover, all of the applicants' asserted uses represented merely hypothetical possibilities and were plainly not "specific." Finally, because the Board applied the correct legal standard and the decision regarding utility was supported by substantial evidence, the applicants failed to satisfy the enablement requirement of 35 U.S.C.S. § 112 as a matter of law.

As for the applicable standard of review, the Court explained that whether an application discloses a utility for a claimed invention is a question of fact, confined to the factual record complied by the Board.  Consquently, the Court reviews the Board's determination that the '643 application failed to satisfy the utility requirement of § 101 for substantial evidence. 

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