Wednesday, November 13, 2013

In re Fisher case brief

In re Fisher case brief summary
421 F.3d 1365 (2005)

Appellant applicants appealed a decision of the U.S. Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences, which affirmed the examiner's final rejection of the only pending claim of their application as unpatentable for lack of utility under 35 U.S.C.S. § 101 and lack of enablement under 35 U.S.C.S. § 112, para. 1.

The claimed invention related to five purified nucleic acid sequences, commonly referred to as expressed sequence tags (ESTs), that encoded proteins and protein fragments in maize plants.


  • The court affirmed. 
  •  The court held that none of the applicants' seven asserted uses met the utility requirement of 35 U.S.C.S. § 101. 
  • First, the Board did not apply an incorrect legal standard when it made reference to a "spectrum" to differentiate between a substantial utility and an insubstantial utility. 
  • This was not a new test for assessing the utility of ESTs but rather was in conformance with the standards set forth in Brenner. 
  • Second, the claimed ESTs were mere "objects of use-testing," to wit, objects upon which scientific research could be performed with no assurance that anything useful would be discovered in the end. 
  • Moreover, all of the applicants' asserted uses represented merely hypothetical possibilities and were plainly not "specific." 
  • And last, because the Board applied the correct legal standard and the decision regarding utility was supported by substantial evidence, the applicants failed to satisfy the enablement requirement of 35 U.S.C.S. § 112 as a matter of law.


The court affirmed the Board's decision.

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