Application of John A. Nelson and Anthony C. Shabica

KIRKPATRICK, Judge

(dissenting).

With the greatest respect for the views of the majority of the court, I am unable to agree. It seems to me beyond question that the result of the court’s decision and opinion is to write the requirements of the Patent Statute, that inventions must be useful, out of the law. Section 101 allows a patent to an inventor only if he has discovered a useful process, machine, manufacture or composition of matter. Apparently unwilling to accept a mere statement in the application that the subject matter is useful, Congress added Section 112 which, in effect, requires the inventor to tell in his specification exactly how to make use of the invention.

Now, every composition of matter whether new or old, that we so far have knowledge of, can be changed or modified physically or chemically. Congress certainly meant more by “useful” in the statute than mere capability of being changed into something different. It is hardly reasonable to think of Congress as setting up, as a special requirement for patentability, a quality inherent in every composition of matter which can be invented or described.

The application presently before us is for a chemical compound. Beyond the mere fact that it can be changed, all that *191 is disclosed, so far as utility is concerned, is that if changed by certain well understood chemical procedures, it will produce a different chemical compound (or different compounds) belonging to the steroid group — compounds having generally similar molecular structures. Some members of this group are known to have beneficial therapeutic effects. Others have no such effect, or at least none known to science. There is nothing in the entire specification to show what any steroid which can be derived from the compound of the application will do or how to manufacture a steroid which will have any therapeutic value, or, for that matter, any value of any kind.

Admittedly, no great degree of usefulness is necessary for a valid patent, but every definition of “useful,” including the ones cited by the majority, requires at least some degree of utility. The first sentence of the excerpt from Justice Story’s charge to the jury, quoted by the majority, if taken by itself, may give a different impression, but it will be seen from the latter part of the excerpt that what was meant was that if an invention “steers wide” of frivolousness or danger to society, it is unimportant whether it is “more or less” useful. Judge Goodrich’s remark in Cusano v. Kotler, 3 Cir., 159 F.2d 159, 162 , to the effect that “A study of the cases reveals that the legal significance of ‘useful’ in the patent statute differs from the general conversational connotation of the word” is nothing more than a statement of the fact that a game (the patent under consideration was for a game) may be regarded as useful under the patent statute although many people consider time spent in playing games as time wasted. I cannot believe that either text writers or courts ever thought that the word “useful” in the statute meant simply “harmless.”

The burden is upon the applicant for a patent to show that his invention has all the requirements of the statute, including usefulness. At the very least, even by Justice Story’s stahdard, he must show that it is neither frivolous nor injurious to the “well-being * * * of society.” I do not suppose that this applicant’s product is injurious to the well-being of society but for all that he tells us in his specification it could be, and, though it may well be that he has spent time and labor in a sincere effort to create something which would be a benefit, one could call the result frivolous despite its impressive formula if it should turn out to have no use of any kind.

The requirements of Section 112 as to showing manner of using are inseparable from those of Section 101 as to usefulness. The provision of Section 112 that the specification shall describe the manner of using a process or composition of matter (unless it is obvious) certainly means, in view of Section 101, that the applicant must show how his invention can be employed usefully. The present application discloses how the new composition of matter may be made, but the disclosure of the manner of using it amounts to an instruction to experiment with it in the hope (which the applicant does not even pretend is a probability) that something else can be made from it which can be employed usefully.

Describing the compound of this application as a “building block” has a certain persuasiveness, but could not the product of any uncompleted research be so described, since others, beginning where the inventor left off, can carry on the work, perhaps to a successful conclusion?' What stands out clearly from this record is that the search for a useful therapeutic compound has stopped short of achievement and that the applicant has left the result of his unfulfilled efforts to successors for experimentation to see whether anything useful may come of it.

This court, in the case of In re Brem-ner et al., 182 F.2d 216, 217 , 37 CCPA 1032, said “we feel certain that the law requires that there he in the application an assertion of utility and an indication of the use or uses intended.” I do not think the Bremner case can be successfully distinguished from the present one. The case turned on the point that, while a new chemical compound could be produced by the processes disclosed by the *192 appellants, the products claimed to be so developed were not patentable because no use for them had been shown in the specification. Bfemner’s resins were just as useful for further experimentation by persons skilled in the art as the present applicant’s androstene compounds.

Concededly, the decision of the Court of Appeals for the District of Columbia Circuit in Petrocarbon Limited v. Watson, 101 U.S.App.D.C. 214 , 247 F.2d 800 , in which the application was held insufficient for failure to disclose what use could be made of the product, is on all fours with the case now before the court.

This application fails to show that the composition of matter which it proposes to patent is useful, and I think that the decision of the Patent Board of Appeals rejecting all its claims should be affirmed. I agree with the majority as to the affirmance of the board's refusal to admit the proposed amendment to appellant's specification, and would affirm the decision appealed from in its entirety.