Case involved two applications for patent on an allegedly novel process for making certain known steroids. The second applicant filed an interference, in order to determine priority. A Patent Office examiner denied Manson's application, and the denial was affirmed by the Board of Appeals within the Patent Office. The ground for rejection was the failure to disclose any utility for the chemical compound produced by the process. The CCPA reversed. The Supreme Court presented the issue as "whether 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."
The Supreme Court reversed the CCPA, finding that the utility requirement for obtaining a patent had not been met. The facts that the chemical process yielded the intended product and was not in itself detrimental, that the potential usefulness of the compound produced was under investigation by serious scientific researchers, and that supporting affidavits revealed that an adjacent homologue of the steroid yielded had tumor-inhibiting effects in mice, were not enough to overturn the patent office's determination that the utility requirement had not been met.
Excerpts and Summaries
Saturday 23 of August, 2008 22:08:28 GMT by Unknown
Tuesday 09 of September, 2008 15:26:57 GMT by Unknown