Abe Fortas

“ Narrowly read, it does no more than compel us to decide whether the invention in question is 'frivolous and insignificant'-a query no easier of application than the one built into the statute. Read more broadly, so as to allow the patenting of any invention not positively harmful to society, it places such a special meaning on the word 'useful' that we cannot accept it in the absence of evidence that Congress so intended. There are, after all, many things in this world which may not be considered 'useful' but which, nevertheless are totally without a capacity for harm. ”

“ Moreover, the pressure for secrecy is easily exaggerated, for if the inventor of a process cannot himself ascertain a 'use' for that which his process yields, he has every incentive to make his invention known to those able to do so. Finally, how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent, there is little incentive for others to undertake a search for uses. ”

“ We find absolutely no warrant for the proposition that although Congress intended that no patent be granted on a chemical compound whose sole 'utility' consists of its potential role as an object of use-testing, a different set of rules was meant to apply to the process which yielded the unpatentable product. ”

“ Even if we knew precisely what Congress meant in 1790 when it devised the 'new and useful' phraseology and in subsequent re-enactments of the test, we should have difficulty in applying it in the context of contemporary chemistry where research is as comprehensive as man's grasp and where little or nothing is wholly beyond the pale of 'utility'-if that word is given its broadest reach. ”

“ As is so often the case, however, a simple, everyday word can be pregnant with ambiguity when applied to the facts of life. That this is so is demonstrated by the present conflict between the Patent Office and the CCPA over how the test is to be applied to a chemical process which yields an already known product whose utility-other than as a possible object of scientific inquiry-has not yet been evidenced. It was not long ago that agency and court seemed of one mind on the question. ”

“ And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. The inventor of the process, or the corporate organization by which he is employed, has some incentive to keep the invention secret while uses for the product are searched out. ”

“ These arguments for and against the patentability of a process which either has no known use or is useful only in the sense that it may be an object of scientific research would apply equally to the patenting of the product produced by the process. Respondent appears to concede that with respect to a product, as opposed to a process, Congress has struck the balance on the side of nonpatentability unless 'utility' is shown. Indeed, the decisions of the CCPA are in accord with the view that a product may not be patented absent a showing of utility greater than any adduced in the present case. ”

“ The question of priority of invention shall be determined by a board of patent interferences * * * whose decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent Office of the claims involved, and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor. ”

“ Thus, the decision sought to be reviewed is that of an Article III court. It is 'judicial' in character. It is not merely an instruction to the Commissioner or part of the 'administrative machinery' of the Patent Office. It is final and binding in the usual sense. [11] In sum, Postum has no vitality in the present setting, and there remains no constitutional bar to our jurisdiction. ”

“ The ground for rejection was the failure 'to disclose any utility for' the chemical compound produced by the process. Letter of Examiner, dated May 24, 1960. This omission was not cured, in the opinion of the Patent Office, by Manson's reference to an article in the November 1956 issue of the Journal of Organic Chemistry, 21 J.Org.Chem. 1333-1335, which revealed that steroids of a class which included the compound in question were undergoing screening for possible tumor-in-hibiting effects in mice, and that a homologue [3] adjacent to Manson's steroid had proven effective in that role. ”

“ As a member of the Board and the official responsible for selecting the membership of its panels, 35 U.S.C. § 7 (1964 ed.) , the Commissioner may be appropriately considered as bound by Board determinations. No such consideration operates to prevent his secking review of adverse decisions rendered by the CCPA. ↑ Act of March 2, 1927, c. ”