What Makes a Chemical Invention Useful

let s turn our attention to the second component of the utility requirement, which requires that the claimed subject matter must be useful. As one court opined a simple everyday word [such as useful] can be pregnant with ambiguity when applied to the facts of life. 7 The contours of the utility requirement can be defined by two principles. First, the claimed invention must have specific and substantial utility and must provide sufficient information to make its use readily apparent to those familiar with the technological field of the invention. 8 Second, the alleged utility must be credible. 

so what does this all mean First, one can think of the requirements of specific and substantial as being one, where the combination means that the claimed invention is applicable to a real-world utility. Probably the easiest way to discern whether an invention has the requisite specificity and substantiality is to look to whether the claimed invention in question can be of immediate use or whether it s utility would require further work or analysis to verify. This means that the utility cannot be speculative. Firming up this definition as it might be applied to chemistry related inventions, some situations lacking a specific and substantial utility are listed 9 

The applicant appealed the rejected claims to the USPTO Board of Appeals, which affirmed the examiner s rejections  

The portions of this specification. .. show that the claimed compounds can be used to prepare the corresponding 2,3-keto compounds. Having arrived at this point, what has been accomplished Appellants do not assert that the latter compounds have known utility. .. such conversion does not constitute a disclosure of utility for the claimed compounds because there is no disclosed utility nor any indication of a known utility for the 2,3-keto derivatives. A useless product does not become useful by virtue of conversion into another useless product.12 

From this opinion, we not only can derive the principle that the claimed compounds themselves are not patentable where their utility is only speculative, but also that the process for converting those intermediates to their final products is also not patentable, where the final products have speculative utility only.15 

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The second factor considers the nature of the invention and the type of disclosure contained in the application. Some inventions by their very nature may be more conceptual in nature, and others require more instruction on how to actually make and use the claimed invention. For example, some mechanical inventions might need nothing more than a blueprint to allow one to make and use the invention.31 In other words, sometimes little more than a look or inspection of a drawing can allow one to comprehend not only the invention and that it would work but also that it can be made and used without additional comment or instruction from the inventors. The sum total of the disclosure plus the knowledge already available in the art enable the invention. In contrast, many areas of chemistry are more empirical in nature. Absent specific instruction regarding exactly what reagents are used, reaction times required, temperatures employed, etc., a chemical process may fail and/or a composition may not be produced at all or, even if successful, the final result may require a large amount of experimentation to get it to work. 

Of interest is the decision of the US Supreme Court in the Manson case (383 US 519) which overruled the utility doctrine enunciated by the Court of Customs and Patent Appeals in the Nelson case (47 CCPA 1031) and which adjudicated the question of what constitutes utility in a chemical process. The invention involved a process for making certain steroids. The court held that the utility of the product must be established and that merely providing a product to be available for use testing by the trade was insufficient. In the decision, it was pointed out that... 

Wolfgang Pauli once stated that the surface was invented by the devil, illustrating the complexity and difficulty of studying the surfaces of materials. This prompts a fundamental question What is the surface of a material The simplest definition is that the surface is the boundary at which the atoms that make up one material terminate and interface with the atoms of a new material. If the surface is considered to be just the outermost layer of atoms of a material, then it comprises on average only 10 atoms per square centimeter (1 square centimeter equals 0.155 square inch), as compared to the bulk of the material, which consists of approximately 10 atoms per cubic centimeter. Surface chemistry is important in many critical chemical processes, such as enzymatic reactions at biological interfaces found in cell walls and membranes, in electronics at the surfaces and interfaces of microchips used in computers, and the heterogeneous catalysts found in the catalytic converter used for cleaning emissions in automobile exhausts. 

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