In re Malachowski

In re Malachowski
530 F.2d 1402
Bluebook cite
In re Malachowski, 530 F.2d 1402 (C.C.P.A. 1976).
530 F.2d 1402
Item Type
Appeal from decision of PTO Board of Appeals affirming examiner’s rejection of claims for lack of utility. The claims involved were composition and method claims related to a treatment for arthritis using a preparation consisting of the ignition residue of anthracite coal, which was to be administered orally. The claims did not limit the treatment to a particular kind of animal. The specification disclosed uses in dogs and horses, and contemplated use in humans. Additionally, a declaration submitted during prosecution of the patent application established good results in 70% of the animals tested, as well as a complete absence of toxicity. No tests were performed on humans.

The board found that the evidence was adequate to establish utility in lower animals, but not adequate to establish utility for claims not restricted to animals. The board justified this holding by stating that since “human use is alleged for the claimed composition, utility commensurate in scope with the disclosed utility is in order. . . . {T}he tests do not corroborate . . . human usefulness . . . .” Id. at 1404.

The court reversed the board. First, the court noted that “a disclosed utility, uncontested and established by evidence . . . {is} sufficient to satisfy the utility requirement of 35 U.S.C. s 101.” Id. at 1405. The court then found that “even if proof of utility of the claimed invention as an anti-arthritic agent for human beings is lacking, there remains the proven utility as an anti-arthritic agent for lower animals. Having found that the claimed composition has utility as contemplated in the specification, s 101 is satisfied and it becomes unnecessary to decide whether it is in fact useful for the other purposes indicated in the specification as possibilities.” Id.

Excerpts and Summaries

Saturday 04 of October, 2008 22:48:03 GMT
by Unknown
Saturday 04 of October, 2008 22:48:03 GMT
by Unknown

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