In re Joly

In re Joly
376 F.2d 906
Bluebook cite
In re Joly, 376 F.2d 906 (C.C.P.A. 1967).
376 F.2d 906
Item Type
Appeal of decision by PTO Board of Appeals affirming rejection of patent claims. The invention at issue related to steroid compounds and a process for producing the compounds. The patent application specification disclosed that the claimed compounds were useful as intermediates in the preparation of steroids. The examiner rejected the claims for lack of utility, finding that the steroids which the claimed compounds were useful as intermediates for had no known utility. The board agreed, stating that “{a} useless product does not become useful by virtue of conversion into another useless product.” Id. at 1161.

On appeal, the patent applicants argued that the claimed compounds were useful as intermediates, and that the steroids that the compounds produced, while having no specific stated utility, were closely related in chemical structure to other compounds with known utility. The court rejected these arguments. First, the court noted that there was no evidence of record that the steroids which could be obtained from the claimed compounds possessed any properties in common with the allegedly “closely related” compounds. Id. at 1161. The court noted that similar arguments was raised by the applicants in Brenner v. Manson and In re Kirk. Second, the court stated that it did not agree “that the mere disclosure that a claimed chemical compound may be used as an intermediate to make other compounds, without regard for the usefulness of the latter compounds, is adequate under section 101.” Id. at 1162. Thus, the court rejected the claims for lack of utility under § 101.

Excerpts and Summaries

Saturday 04 of October, 2008 22:30:05 GMT
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Monday 06 of October, 2008 18:59:38 GMT
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