In re Nelson

In re Nelson
280 F.2d 172
Bluebook cite
In re Nelson, 280 F.2d 172 (C.C.P.A. 1960), overruled by In re Kirk, 376 F.2d 936 (C.C.P.A. 1967).
280 F.2d 172
Item Type
Appeal from a decision of the Patent Office Board of Appeals rejecting claims to new steroid compounds. The court characterized the issue as whether the patent application specification was sufficient to support a patent, noting that utility “seems to be involved but the precise Patent Office position on this point is still obscure.” The specification stated that the new compounds were “valuable intermediates in the preparation of steroids.” The Patent Office Board of Appeals rejected the claims as lacking utility, affirming the examiners statement that “the applicants fail to show how these intermediates can be converted to products having known useful properties. The mere allegation that they are useful for conversion is not sufficient. . . . There is no justification for assuming that a conversion product of the claimed compound will be useful.”

The court, overturning the Patent Office Board of Appeals, found the claims patentable. The court citing various historical cases and commentaries to define “utility” and “usefulness”, found that intermediaries are “useful” under 35 U.S.C. § 101. The court then separately discussed the disclosure requirements of 35 U.S.C. § 112, noting that the specification met the requirement of Application of Bremner, 182 F.2d 216 (C.C.P.A. 1950), that a patent specification contain “an assertion of utility and an indication of the use or uses intended.” The court specifically noted that this requirement is separate from the utility requirement of § 101.

This case, with respect to the holding that intermediaries are “useful,” was overruled in Application of Kirk, 376 F.2d 936.

Excerpts and Summaries

Thursday 28 of August, 2008 21:41:36 GMT
by Unknown
Sunday 07 of September, 2008 16:08:31 GMT
by Unknown

Portions © 2006-2019 by Michael Risch, Some Rights Reserved | Copyright Notice| Legal Disclaimer