U.S. Supreme Court Sakraida v. Ag Pro, Inc., 425
U.S. 273 (1976) Sakraida v. Ag Pro,
Inc. No. 75-110 Argued March 3, 1976 Decided April 20,
1976 425
U.S. 273 CERTIORARI TO THE UNITED STATES
COURT OF APPEALS FOR THE FIFTH
CIRCUIT Syllabus Respondent's patent covering a water flush system to remove cow
manure from the floor of a dairy barn held invalid for obviousness,
it being a combination patent all the elements of which are old in
the dairy business and were well known before the filing of the
patent application. The system's exploitation of the principle of
gravity to effect the abrupt release of water "did not produce a new or different function' . . . within the test of validity of
combination patents." Anderson's Black Rock v. Pavement
Co., 396 U. S. 57 , 396 U. S. 60 .
Pp. 425 U. S.
274 -283. 512 F.2d 141, reversed.

															BRENNAN, J., delivered the opinion for a unanimous Court.

															MR. JUSTICE BRENNAN delivered the opinion of the Court.

															Respondent Ag Pro, Inc., filed this action against petitioner
Sakraida on October 8, 1968, in the District Court for the Western
District of Texas for infringement of United States Letters Patent
3,223,070, entitled "Dairy Page 425 U. S. 274 Establishment," covering a water flush system to remove cow
manure from the floor of a dairy barn. The patent was issued
December 14, 1965, to Gribble and Bennett, who later assigned it to
respondent.

															The District Court's initial grant of summary judgment for
petitioner was reversed by the Court of Appeals for the Fifth
Circuit. 437 F.2d 99 (1971). After a trial on remand, the District
Court again entered a judgment for petitioner. The District Court
held that the patent

															"does not constitute invention, is not patentable, and is not a
valid patent, it being a combination patent, all of the elements of
which are old in the dairy business, long prior to 1963, and the
combination of them as described in the said patent being neither
new nor meeting the test of non-obviousness."

															The Court of Appeals again reversed and held the patent valid.
474 F.2d 167 (1973). On rehearing, the court remanded "with
directions to enter a judgment holding the patent valid, subject,
however, to . . consideration of a motion under Rule 60(b)(2),
F.R.Civ.P., to be filed in the District Court by the [petitioner]
Sakraida on the issue of patent validity based on newly discovered
evidence." 481 F.2d 668, 669 (1973). The District Court granted the
motion and ordered a new trial. The Court of Appeals again
reversed, holding that the grant of the motion was error, because
"the record on the motion establishes that [petitioner] failed to
exercise due diligence to discover the new evidence prior to entry
of the former judgment." 512 F.2d 141, 142 (1975). The Court of
Appeals further held that "[o]ur prior determination of patent
validity is reaffirmed." Id. at 144. We granted
certiorari. 423 U.S. 891 (1975). We hold that the Court of Appeals
erred in holding the patent valid and also in reaffirming its
determination of patent validity. We therefore reverse and direct
the reinstatement of the District Page 425 U. S. 275 Court's judgment for petitioner, and thus we have no occasion to
decide whether the Court of Appeals properly found that petitioner
had not established a case for a new trial under Rule 60(b)(2).

															Systems using flowing water to clean animal wastes from barn
floors have been familiar on dairy farms since ancient times.
[ Footnote 1 ] The District Court
found, and respondent concedes, that none of the 13 elements of the
Dairy Establishment combination is new, [ Footnote 2 ] and many of those Page 425 U. S. 276 elements, including storage of the water in tanks or pools,
appear in at least six prior patented systems. [ Footnote 3 ] The prior art involved spot delivery
of water from tanks or pools Page 425 U. S. 277 to the barn floor by means of high pressure hoses or pipes. That
system required supplemental hand labor, using tractor blades,
shovels, and brooms, and cleaning by these methods took several
hours. The only claimed inventive feature of the Dairy
Establishment combination of old elements is the provision for
abrupt release of the water from the tanks or pools directly onto
the barn floor, which causes the flow of a sheet of water that
washes all animal waste into drains within minutes and requires no
supplemental hand labor. As an expert witness for respondent
testified concerning the effect of Dairy Establishment's
combination:

															"[W]ater at the bottom has more friction than this water on the
top, and it keeps moving ahead, and as this water keeps moving
ahead, we get a rolling action of this water which produced the
cleaning action. . . . You do not get this in a hose. . . .
[U]nless that water is continuously directed toward the cleaning
area, the cleaning action almost ceases instantaneously. . . .
[ Footnote 4 ] " Page 425 U. S. 278 The District Court found that

															"[n]either the tank which holds the water nor the means of
releasing the water quickly is new, but embrace[s] tanks and doors
which have long been known,"

															and further that

															"their use in this connection is one that is obvious, and the
patent in that respect is lacking in novelty. The patent does not
meet the non-obvious requirements of the law."

															The District Court therefore held that Dairy Establishment "may
be relevant to commercial success, but not to invention," because
the combination "was reasonably obvious to one with ordinary skill
in the art." Moreover, even if the combination filled a "long-felt
want and . . . has enjoyed commercial success, those matters,
without invention, will not make patentability." Finally, the
District Court concluded:

															"[T]o those skilled in the art, the use of the old elements in
combination was not an invention by the obvious-nonobvious
standard. Even Page 425 U. S. 279 though the dairy barn in question attains the posture of a
successful venture, more than that is needed for invention.
[ Footnote 5 ]"

															The Court of Appeals disagreed with the District Court's
conclusion on the crucial issue of obviousness.

															It has long been clear that the Constitution requires that there
be some "invention" to be entitled to patent protection. Dann
v. Johnston, ante p. 425 U. S. 219 . As
we explained in Hotchkiss v.
Greenwood , 11 How. 248, 52 U. S. 267 (1851):

															"[U]nless more ingenuity and skill . . . were required . . .
than were possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and
ingenuity which constitute essential elements of every invention.
In other words, the improvement is the work of the skillful
mechanic, not that of the inventor."

															This standard was enacted in 1952 by Congress in 35 U.S.C. §
103

															"as a codification of judicial precedents . . . with
congressional directions that inquiries into the obviousness of the
subject matter sought to be patented are a prerequisite to
patentability." Graham v. John Deere Co., 383 U. S.
1 , 383 U. S. 17 (1966). Section 103 provides:

															"A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner
in which the invention was made. " Page 425 U. S. 280 The ultimate test of patent validity is one of law, Great A.
& P. Tea Co. v. Supermarket Corp., 340 U.
S. 147 , 340 U. S. 155 (1950), but resolution of the obviousness issue necessarily entails
several basic factual inquiries, Graham v. John Deere Co.,
supra at 383 U. S. 17 .

															"Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved." Ibid. The Court of Appeals concluded that "the facts presented at
trial clearly do not support [the District Court's] finding of
obviousness under the three-pronged Graham test. . . ." 474 F.2d at
172. We disagree, and hold that the Court of Appeals erroneously
set aside the District Court's findings.

															The scope of the prior art was shown by prior patents, prior art
publications, affidavits of people having knowledge of prior flush
systems analogous to respondent's, and the testimony of a dairy
operator with 22 years of experience who described flush systems he
had seen on visits to dairy farms throughout the country. Our
independent examination of that evidence persuades us of its
sufficiency to support the District Court's finding

															"as a fact that each and all of the component parts of this
patent . . . were old and well known throughout the dairy industry
long prior to the date of the filing of the application for the
Gribble patent. . . . What Mr. Gribble referred to . . . as the
essence of the patent, to-wit, the manure flush system, was old,
various means for flushing manure from dairy barns having been used
long before the filing of the application. . . . [ Footnote 6 ]"

															Indeed, Page 425 U. S. 281 respondent admitted at trial "that the patent is made up of a
combination of old elements," and "that all elements are
individually old. . . ." Accordingly, the District Court properly
followed our admonition in Great A. & P. Tea Co. v.
Supermarket Corp., supra at 340 U. S.
152 :

															"Courts should scrutinize combination patent claims with a care
proportioned to the difficulty and improbability of finding
invention in an assembly of old elements. . . . A patent for a
combination which only unites old elements with no change in their
respective functions . . . obviously withdraws what already is
known into the field of its monopoly and diminishes the resources
available to skillful men. . . ."

															The Court of Appeals recognized that the patent combined old
elements for applying water to a conventional sloped floor in a
dairy barn equipped with drains at the bottom of the slope and that
the purpose of the storage tank -- to accumulate a large volume of
water capable of being released in a cascade or surge -- was
equally conventional. 474 F.2d at 169. It concluded, however, that
the element lacking in the prior art was any evidence of an
arrangement of the old elements to effect the abrupt release of a
flow of water to wash animal wastes from the floor of a dairy barn. Ibid. Therefore, Page 425 U. S. 282 "although the [respondent's] flush system does not embrace a
complicated technical improvement, it does achieve a synergistic
result through a novel combination." Id. at 173.

															We cannot agree that the combination of these old elements to
produce an abrupt release of water directly on the barn floor from
storage tanks or pools can properly be characterized as
synergistic, that is, "result[ing] in an effect greater than the
sum of the several effects taken separately." Anderson's-Black
Rock v. Pavement Co., 396 U. S. 57 , 396 U. S. 61 (1969). Rather, this patent simply arranges old elements with each
performing the same function it had been known to perform, although
perhaps producing a more striking result than in previous
combinations. Such combinations are not patentable under standards
appropriate for a combination patent. Great A. & P. Tea Co.
v. Supermarket Corp., supra; Anderson's-Black Rock v. Pavement Co.,
supra. Under those authorities, this assembly of old elements
that delivers water directly, rather than through pipes or hoses,
to the barn floor falls under the head of "the work of the skilful
mechanic, not that of the inventor." Hotchkiss v.
Greenwood, 11 How. at 52 U. S. 267 . Exploitation of the principle of gravity
adds nothing to the sum of useful knowledge where there is no
change in the respective functions of the elements of the
combination; this particular use of the assembly of old elements
would be obvious to any person skilled in the art of mechanical
application. See Dann v. Johnston, ante at 425 U. S.
229 -230.

															Though doubtless a matter of great convenience, producing a
desired result in a cheaper and faster way, and enjoying commercial
success, Dairy Establishment "did not produce a new or
different function' . . . within the test of validity of
combination patents." Anderson's Black Rock v. Pavement Co.,
supra at 396 U. S. 60 .
These Page 425 U. S. 283 desirable benefit "without invention will not make
patentability." Great A. & P. Tea Co. v. Supermarket
Corp., 340 U.S. at 340 U. S. 153 . See Dann v. Johnston, ante at 425 U. S. 230 n. 4. Reversed. [ Footnote 1 ]

															Among the labors of Hercules is the following:

															"Heracles now set out to perform his fifth Labour, and this time
his task was to cleanse the stables of Augeas in a single day.
Augeas was a rich king of Elis, who had three thousand cattle. At
night, the cattle always stood in a great court surrounded with
walls, close to the king's palace, and as it was quite ten years
since the servants had cleaned it out, there was enough refuse in
the court to build up a high mountain. Heracles went to Augeas and
asked if he would give him the tenth part of his flocks if he
thoroughly cleansed his stables in a single day. The king looked
upon this as such an absolutely impossible feat that he would not
have minded promising his kingdom as a reward for it, so he laughed
and said, 'set to work, we shall not quarrel about the wages,' and
he further promised distinctly to give Heracles what he asked, and
this he did in the presence of Phyleus, his eldest son, who
happened to be there. The next morning Heracles set to work, but
even his strong arms would have failed to accomplish the task if
they had not been aided by his mother-wit. He compelled a mighty
torrent to work for him, but you would hardly guess how he did it.
First he opened great gates on two opposite sides of the court.,
and then he went to the stream, and when he had blocked up its
regular course with great stones, he conducted it to the court that
required to be cleansed, so that the water streamed in at one end
and streamed out at the other, carrying away all the dirt with it.
Before evening, the stream had done its work and was restored to
its usual course."

															C. Witt, Classic Mythology 11120 (1883).

															[ Footnote 2 ]

															The District Court found as follows respecting Claims 1 and 3,
the only claims involved in the case:

															"1. I find that the 'dairy establishment' as described in United
States Letters Patent 3,223,070 is composed of 13 separate items,
as follows:"

															"(a) ' . . . a smooth, evenly contoured, paved surface forming a
floor providing a walking surface. . . .'"

															"(b) ' . . . drain means for draining wash water from such floor
opening to the top of the floor.'"

															"(c) ' . . . said smooth, evenly contoured surface which forms
such floor sloping toward said drain. . . .'"

															"(d) ' . . . multiple rest areas with individual stalls for each
cow and with each of said stalls having a bottom which is also a
smooth pavement. . . .'"

															"(e) ' . . . which is disposed at an elevation above the paved
surface forming the floor. . . .'"

															"(f) ' . . . said stalls being dimensioned so that a cow can
comfortably stand or lie in the stall, but offal from the cow falls
outside the stall bottom and onto the floor providing the walking
surface in the barn. . . .'"

															"(g) ' . . . said barn further including defined feeding areas
having feeding troughs. . . .'"

															"(h) ' . . . a cow-holding area.'"

															"(i) ' . . . a milking area.'"

															"(j) ' . . . a transfer area all bottomed with the walking
surface forming said floor in the barn. . . .'"

															"(k) ' . . . and floor washing means for washing the floor
providing the walking surface in the barn where said floor bottom,
said feeding, holding, milking and transfer areas operable to send
wash water flowing over the floor with such water washing any cow
offal thereon into the said drain means, said floor washing means
including means located over a region of said floor which is uphill
from said drain means constructed to collect water as a pool above
said floor and operable after such collection of water as a pool to
dispense the water as a sheet of water over said floor.'"

															"(l) A tank on a mounting, so that it can be tilted, and the
water poured out to cascade on the floor to form a sheet."

															"(m) A floor-washing means comprising a dam for damming or
collecting water as a pool directly on the floor, which such dam
abruptly openable to send water cascading as a sheet over the floor
towards the drain."

															"2. I further find that each of the items above-described were
not new, but had been used in the dairy business prior to the time
the application for the said Gribble patent, made the subject of
this action, had been filed in the Patent Office of the United
States on November 5, 1963."

															[ Footnote 3 ]

															The District Court found:

															"[M]any of the items going to make up Plaintiff's claim for a
patent were disclosed in prior patents, known respectively as the
McCormack patent, the Holz patent, the Ingraham patent, the
Kreutzer patent, the Bogert patent, and the Luks patent; and that
the statements of the Examiner's opinions refusing to issue a
patent are true as to all items there stated to be covered in prior
patents or publications."

															[ Footnote 4 ]

															This witness further testified:

															"[W]ater has energy, and it can be used in many different ways.
In a hose, the energy is used by impact, under pressure, external
force that is applied to this pressure -- to this water, whereas
the water that comes down as a sheet or wall of water has built in
energy because of its elevation, and, as this water is released, it
does the same thing water does in a flooded stream. As this water
-- I will try to make this clear, and I hope I can, on the surface
of this pavement there are these piles of manure droppings. This
pavement is smooth and this water moves down over this manure. The
water at the bottom has more friction than this water on the top,
and it keeps moving ahead, and as this water keeps moving ahead, we
get a rolling action of this water which produced the cleaning
action. That is the key to this method of cleaning. You do not get
this in a hose. You do not get it in a gutter, as has been used in
the past. I might just mention a little bit about the hose. This
squirting water on a floor -- probably have done it on our own
sidewalks or walkways, and I just mention that, that, unless that
water is continuously directed towards the cleaning area the
cleaning action almost ceases instantaneously. Now the movie that
was shown earlier very dramatically illustrated that point. The
cleaning action -- as soon as the hoses moved to one side the
cleaning action ceased here and that is why this hose was moved
back and forth, to drive this stuff on down to where we want
it."

															[ Footnote 5 ]

															The court also concluded that,

															"while the combination of old elements may have performed a
useful function, it added nothing to the nature and quality of
dairy barns theretofore used."

															[ Footnote 6 ]

															The court stated:

															"I therefore find as a fact that each and all of the component
parts of this patent as listed under the applicant's claims set out
in said patent, were old and well known throughout the dairy
industry long prior to the date of the filing of the application
for the Gribble patent. I further find that what Mr. Gribble
referred to in his deposition as the essence of the patent, to-wit,
the manure flush system, was old, various means for flushing manure
from dairy barns having been used long before the filing of the
application for the Gribble patent, the general idea in that
connection being a hard surfaced sloping floor onto which the cows'
offal was dropped, and some system of introducing water in
sufficient quantities and force onto said floor to wash the offal
therefrom, with a ditch or drain to carry the offal so washed away
from the barn, either into a manure container or otherwise."


U.S. Supreme Court Brenner v. Manson, 383
U.S. 519 (1966) Brenner v. Manson No. 58 Argued November 17,
1965 Decided March 21,
1966 383
U.S. 519 CERTIORARI TO THE UNITED STATES
COURT OF CUSTOMS AND PATENT APPEALS Syllabus In December 1957 Ringold and Rosenkranz applied for a patent on
an allegedly novel process for making certain steroids, claiming
priority as of December, 1956. A patent issued thereon in 1959. In
January, 1960, respondent filed an application to patent the same
process, asserting that he had discovered it prior to December,
1956, and requesting that an "interference" be declared to test the
issue of priority. Respondent's application was denied by a Patent
Office examiner, the Board of Appeals affirming, for failure "to
disclose any utility for" the compound produced by the process. The
Court of Customs and Patent Appeals (CCPA) reversed, holding that,
"where a claimed process produces a known product, it is not
necessary to show utility for the product" as long as it is not
detrimental to the public interest. Held: 1. This Court has jurisdiction under 28 U.S.C. § 1256 to review
upon petition of the Commissioner of Patents patent decisions of
the CCPA. Pp. 383 U. S.
523 -528.

															2. The Patent Office properly may refuse to declare an
"interference" on the ground that the application therefor fails to
disclose a prima facie case of patentability. P. 383 U. S. 528 , n 12.

															3. The practical utility of the compound produced by a chemical
process is an essential element in establishing a prima
facie case for the patentability of the process. Pp. 383 U. S.
528 -536.

															(a) One may patent only that which is useful. Pp. 383 U. S.
528 -529, 383 U. S.
535 .

															(b) Respondent has not provided any basis for overturning the
determination of the Patent Office that the utility requirement was
not satisfied in this case by reference to the alleged utility of
an adjacent homologue. Pp. 383 U. S. 531 -532.

															(c) The requirement that a chemical process be useful is not
satisfied by a showing that the compound yielded belongs to a class
of compounds which scientists are screening for possible uses. Pp. 383 U. S.
532 -536. Page 383 U. S. 520 (d) Nor is the utility requirement for chemical processes
satisfied by a showing that the process works, i.e., yields the intended product. Pp. 383 U. S.
532 -536.

															52 C.C.P.A.(Pat.) 739, 333 F.2d 234, reversed.

															MR. JUSTICE FORTAS delivered the opinion of the Court.

															This case presents two questions of importance to the
administration of the patent laws: first, whether this Court has
certiorari jurisdiction, upon petition of the Commissioner of
Patents, to review decisions of the Court of Customs and Patent
Appeals; and second, whether the practical utility of the compound
produced by a chemical process is an essential element in
establishing a prima facie case for the patentability of
the process. The facts are as follows:

															In December, 1957, Howard Ringold and George Rosenkranz applied
for a patent on an allegedly novel process for making certain known
steroids. [ Footnote 1 ] They
claimed Page 383 U. S. 521 priority as of December 17, 1956, the date on which they had
filed for a Mexican patent. United States Patent No. 2,908,693
issued late in 1959.

															In January, 1960, respondent Manson, a chemist engaged in
steroid research, filed an application to patent precisely the same
process described by Ringold and Rosenkranz. He asserted that it
was he who had discovered the process, and that he had done so
before December 17, 1956. Accordingly, he requested that an
"interference" be declared in order to try out the issue of
priority between his claim and that of Ringold and Rosenkranz.
[ Footnote 2 ]

															A Patent Office examiner denied Manson's application, and the
denial was affirmed by the Board of Appeals within the Patent
Office. 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 Page 383 U. S. 522 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-inhibiting effects in mice,
and that a homologue [ Footnote
3 ] adjacent to Manson's steroid had proven effective in that
role. Said the Board of Appeals,

															"It is our view that the statutory requirement of usefulness of
a product cannot be presumed merely because it happens to be
closely related to another compound which is known to be
useful."

															The Court of Customs and Patent Appeals (hereinafter CCPA)
reversed, Chief Judge Worley dissenting. 52 C.C.P.A.(Pat.) 739,
745, 333 F.2d 234, 237-238. The court held that Manson was entitled
to a declaration of interference, since, "where a claimed process
produces a known product, it is not necessary to show utility for
the product" so long as the product "is not alleged to be
detrimental to the public interest." Certiorari was granted, 380
U.S. 971, to resolve this running dispute over what constitutes
"utility" in chemical process claims, [ Footnote 4 ] as well as to answer the question concerning
our certiorari jurisdiction. Page 383 U. S. 523 I Section 1256 of Title 28 U.S.C. (1964 ed.), enacted in 1948,
provides that "Cases in the Court of Customs and Patent Appeals may
be reviewed by the Supreme Court by writ of certiorari." This
unqualified language would seem to foreclose any challenge to our
jurisdiction in the present case. Both the Government [ Footnote 5 ] and the respondent urge
that we have certiorari jurisdiction over patent decisions of the
CCPA, although the latter would confine our jurisdiction to those
petitions filed by dissatisfied applicants, and would deny the
Commissioner of Patents the right to seek certiorari. [ Footnote 6 ] This concert of opinion
does not settle the basic question, because jurisdiction cannot be
conferred by consent of the parties. The doubt that does exist
stems from a decision of this Page 383 U. S. 524 Court, rendered in January, 1927, in Postum Cereal Co. v.
California Fig Nut Co., 272 U. S. 693 ,
which has been widely interpreted as precluding certiorari
jurisdiction over patent and trademark decisions of the CCPA. Postum, however, was based upon a statutory scheme
materially different from the present one. Postum involved
a proceeding in the Patent Office to cancel a trademark. The
Commissioner of Patents rejected the application. An appeal was
taken to the then Court of Appeals for the District of Columbia,
which, in 1927, exercised the jurisdiction later transferred to the
CCPA. Under the statutory arrangement in effect at the time, the
judgment of the Court of Appeals was not definitive, because it was
not an order to the Patent Office determinative of the controversy.
A subsequent bill in equity could be brought in the District Court,
and it was possible that a conflicting adjudication could thus be
obtained. On this basis, the Court held that it could not review
the decision of the Court of Appeals. It held that the conclusion
of the Court of Appeals was an "administrative decision," rather
than a "judicial judgment":

															"merely an instruction to the Commissioner of Patents by a court
which is made part of the machinery of the Patent Office for
administrative purposes."

															272 U.S. at 272 U. S.
698 -699. Therefore, this Court concluded, the proceeding
in the Court of Appeals -- essentially administrative in nature --
was neither case nor controversy within the meaning of Article III
of the Constitution. Congress might confer such "administrative"
tasks upon the courts of the District of Columbia, wrote Chief
Justice Taft, but it could not empower this Court to participate
therein.

															Congress soon amended the statutory scheme. In March of 1927, it
provided that an action in the District Court was to be
alternative, and not cumulative, to appellate review, that it could
not be maintained to overcome Page 383 U. S. 525 an adjudication in the Court of Appeals. [ Footnote 7 ] In 1929, Congress transferred
appellate jurisdiction over the Commissioner's decisions from the
Court of Appeals to what had been the Court of Customs Appeals and
was now styled the Court of Customs and Patent Appeals. [ Footnote 8 ] Whereas the Court of
Appeals had been empowered to take additional evidence and to
substitute its judgment for that of the Commissioner, the CCPA was
confined to the record made in the Patent Office. [ Footnote 9 ] Compare Federal
Communications Comm'n v. Pottsville Broadcasting Co., 309 U. S. 134 , 309 U. S.
144 -145. Despite these changes, however, Postum had acquired a life of its own. It continued to stand in the way of
attempts to secure review here of CCPA decisions respecting the
Commissioner of Patents. See, e.g., McBride v. Teeple, 311
U.S. 649, denying certiorari for "want of jurisdiction" on the
authority of Postum. [ Footnote
10 ]

															This was the background against which Congress, in its 1948
codification of statutes pertaining to the judiciary, enacted §
1256, blandly providing in unqualified language for review on
certiorari of "[c]ases in the Court of Customs and Patent Appeals."
Nothing in the legislative materials relating to the statute,
except its language, is of assistance to us in the resolution of
the present problem: did the statutory changes which followed Page 383 U. S. 526 Postum mean that a patent decision by the CCPA was a
"judicial" determination reviewable by this Court under Article
III? And, if so, was § 1256 intended to create such
jurisdiction?

															Assistance came with the 1958 revision of the Judicial Code.
Congress there declared the CCPA "a court established under article
III . . . ," that is, a constitutional court exercising judicial,
rather than administrative, power. 28 U.S.C. § 211 (1964 ed.). In
1962, this Court addressed itself to the nature and status of the
CCPA. Glidden Co. v. Zdanok, 370 U.
S. 530 , raised the question whether a judge of the CCPA
was an Article III judge, capable of exercising federal judicial
power. In answering that question in the affirmative, MR. JUSTICE
HARLAN's opinion, for three of the seven Justices participating,
expressly left open the question whether § 1256 conferred
certiorari jurisdiction over patent and trademark cases decided in
the CCPA, 370 U.S. at 370 U. S. 578 n. 49. It suggested, however, that Postum might be nothing
more than a museum piece. The opinion noted that Postum "must be taken to be limited to the statutory scheme in existence
before" 1929. 370 U.S. at 370 U. S. 579 .
The concurring opinion of MR. JUSTICE CLARK, in which THE CHIEF
JUSTICE joined, did not reflect any difference on this point.

															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. [ Footnote 11 ]
In sum, Postum Page 383 U. S. 527 has no vitality in the present setting, and there remains no
constitutional bar to our jurisdiction.

															Having arrived at this conclusion, we have no difficulty in
giving full force and effect to the generality of the language in §
1256. It would be entirely arbitrary for us to assume, despite the
statutory language, that Congress, in 1948, intended to enshrine Postum -- dependent as it was upon a statutory scheme
fundamentally altered in 1927 and 1929 -- as a hidden exception to
the sweep of § 1256. The contrary is more plausible: that, by using
broad and unqualified language, Congress intended our certiorari
jurisdiction over CCPA cases to be as broad as the Constitution
permits.

															This conclusion is reinforced by reference to the anomalous
consequences which would result were we to adopt a contrary view of
§ 1256. Determinations of the Patent Office may be challenged
either by appeal to the CCPA or by suit instituted in the United
States District Court for the District of Columbia. 35 U.S.C. §
145, 28 U.S.C. § 1542 (1964 ed.). Where the latter route is
elected, the decision obtained may be reviewed in the Court of
Appeals for the District of Columbia Circuit, and ultimately in
this Court upon writ of certiorari. Hoover Co. v. Coe, 325 U. S. 79 . It
would be strange indeed if corresponding certiorari jurisdiction
did not exist where the alternative route was elected. Were that
so, in the event of conflict between the CCPA and the courts of the
District of Columbia, resolution by this Court would be achievable
only if the litigants chose to proceed through the latter.
Obviously, the orderly administration both of our certiorari
jurisdiction and of the patent laws requires that ultimate review
be available in this Court, regardless of the route chosen by the
litigants. Page 383 U. S. 528 We therefore conclude that § 1256 authorizes the grant of
certiorari in the present case. We now turn to the merits.
[ Footnote 12 ] II Our starting point is the proposition, neither disputed nor
disputable, that one may patent only that which is Page 383 U. S. 529 "useful." In Graham v. John Deere Co., ante, p. 383 U. S. 1 at 383 U. S. 5 -10, we
have reviewed the history of the requisites of patentability, and
it need not be repeated here. Suffice it to say that the concept of
utility has maintained a central place in all of our patent
legislation, beginning with the first patent law in 1790 [ Footnote 13 ] and culminating in the
present law's provision that

															"Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title. [ Footnote 14 ]"

															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. In Application of
Bremner, 37 C.C.P.A.(Pat.) 1032, 1034, 182 F.2d 216, 217, the
court affirmed rejection by the Patent Office of both process and
product claims. It noted that "no use for the products claimed to
be developed by the processes had been shown in the specification."
It held that "It was never intended that a patent be granted upon a
product, or a process producing a product, unless such product be
useful." Nor was this new doctrine in the court. See Thomas v.
Michael, 35 C.C.P.A.(Pat.) 1036, 1038-1039, 166 F.2d 944,
946-947. Page 383 U. S. 530 The Patent Office has remained steadfast in this view. The CCPA,
however, has moved sharply away from Bremner. The trend
began in Application of Nelson, 47 C.C.P.A.(Pat.) 1031,
280 F.2d 172. There, the court reversed the Patent Office's
rejection of a claim on a process yielding chemical intermediates
"useful to chemists doing research on steroids," despite the
absence of evidence that any of the steroids thus ultimately
produced were themselves "useful." The trend has accelerated,
[ Footnote 15 ] culminating in
the present case, where the court held it sufficient that a process
produces the result intended and is not "detrimental to the public
interest." 52 C.C.P.A.(Pat.) at 745, 333 F.2d at 238.

															It is not remarkable that differences arise as to how the test
of usefulness is to be applied to chemical processes. Even if we
knew precisely what Congress meant in 1790 when it devised the "new
and useful" phraseology and in subsequent reenactments 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.

															Respondent does not -- at least in the first instance -- rest
upon the extreme proposition, advanced by the court below, that a
novel chemical process is patentable so long Page 383 U. S. 531 as it yields the intended product [ Footnote 16 ] and so long as the product is not itself
"detrimental." Nor does he commit the outcome of his claim to the
slightly more conventional proposition that any process is "useful"
within the meaning of § 101 if it produces a compound whose
potential usefulness is under investigation by serious scientific
researchers, although he urges this position, too, as an
alternative basis for affirming the decision of the CCPA. Rather,
he begins with the much more orthodox argument that his process has
a specific utility which would entitle him to a declaration of
interference even under the Patent Office's reading of § 101. The
claim is that the supporting affidavits filed pursuant to Rule
204(b), by reference to Ringold's 1956 article, reveal that an
adjacent homologue of the steroid yielded by his process has been
demonstrated to have tumor-inhibiting effects in mice, and that
this discloses the requisite utility. We do not accept any of these
theories as an adequate basis for overriding the determination of
the Patent Office that the "utility" requirement has not been
met.

															Even on the assumption that the process would be patentable were
respondent to show that the steroid produced had a tumor-inhibiting
effect in mice, [ Footnote
17 ] we would Page 383 U. S. 532 not overrule the Patent Office finding that respondent has not
made such a showing. The Patent Office held that, despite the
reference to the adjacent homologue, respondent's papers did not
disclose a sufficient likelihood that the steroid yielded by his
process would have similar tumor-inhibiting characteristics.
Indeed, respondent himself recognized that the presumption that
adjacent homologues have the same utility [ Footnote 18 ] has been challenged in the steroid
field because of "a greater known unpredictability of compounds in
that field." [ Footnote 19 ]
In these circumstances and in this technical area, we would not
overturn the finding of the Primary Examiner, affirmed by the Board
of Appeals and not challenged by the CCPA.

															The second and third points of respondent's argument present
issues of much importance. Is a chemical process "useful" within
the meaning of § 101 either (1) because it works -- i.e., produces the intended product? or (2) because the compound yielded
belongs to a class of compounds now the subject of serious
scientific investigation? These contentions present the basic
problem for our adjudication. Since we find no specific assistance
in the legislative materials underlying § 101, we are remitted to
an analysis of the problem in light of the general intent of
Congress, the purposes of the patent system, and the implications
of a decision one way or the other.

															In support of his plea that we attenuate the requirement of
"utility," respondent relies upon Justice Story's Page 383 U. S. 533 well known statement that a "useful" invention is one

															"which may be applied to a beneficial use in society, in
contradistinction to an invention injurious to the morals, health,
or good order of society, or frivolous and insignificant [ Footnote 20 ]"

															-- and upon the assertion that to do so would encourage
inventors of new processes to publicize the event for the benefit
of the entire scientific community, thus widening the search for
uses and increasing the fund of scientific knowledge. Justice
Story's language sheds little light on our subject. 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.

															It is true, of course, that one of the purposes of the patent
system is to encourage dissemination of information concerning
discoveries and inventions. [ Footnote 21 ] 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 Page 383 U. S. 534 secret while uses for the product are searched out. However, in
light of the highly developed art of drafting patent claims so that
they disclose as little useful information as possible -- while
broadening the scope of the claim as widely as possible -- the
argument based upon the virtue of disclosure must be warily
evaluated. 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.

															Whatever weight is attached to the value of encouraging
disclosure and of inhibiting secrecy, we believe a more compelling
consideration is that a process patent in the chemical field, which
has not been developed and pointed to the degree of specific
utility, creates a monopoly of knowledge which should be granted
only if clearly commanded by the statute. Until the process claim
has been reduced to production of a product shown to be useful, the
metes and bounds of that monopoly are not capable of precise
delineation. It may engross a vast, unknown, and perhaps unknowable
area. Such a patent may confer power to block off whole areas of
scientific development, [ Footnote 22 ] without compensating benefit to the public.
The basic quid pro quo contemplated by the Constitution
and the Congress for granting a patent monopoly is the benefit
derived by the public from an invention with substantial utility.
Unless and until a process is refined and developed to this point
-- where specific benefit Page 383 U. S. 535 exists in currently available form -- there is insufficient
justification for permitting an applicant to engross what may prove
to be a broad field.

															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. [ Footnote
23 ] 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. [ Footnote 24 ] That proposition seems
to us little more than an attempt to evade the impact of the rules
which concededly govern patentability of the product itself.

															This is not to say that we mean to disparage the importance of
contributions to the fund of scientific information Page 383 U. S. 536 short of the invention of something "useful," or that we are
blind to the prospect that what now seems without "use" may
tomorrow command the grateful attention of the public. But a patent
is not a hunting license. It is not a reward for the search, but
compensation for its successful conclusion. "[A] patent system must
be related to the world of commerce, rather than to the realm of
philosophy. . . ." [ Footnote
25 ]

															The judgment of the CCPA is Reversed. MR. JUSTICE DOUGLAS, while acquiescing in Part I of the Court's
opinion, dissents on the merits of the controversy for
substantially the reasons stated by MR. JUSTICE HARLAN.

															[ Footnote 1 ]

															The applicants described the products of their process as

															"2-methyl dihydrotestosterone derivatives and esters thereof, as
well as 2-methyl dihydrotestosterone derivatives having a C-17
lower alkyl group. The products of the process of the present
invention have a useful high anabolic-androgenic ratio, and are
especially valuable for treatment of those ailments where an
anabolic or anti-estrogenic effect, together with a lesser
androgenic effect, is desired."

															[ Footnote 2 ]

															35 U.S.C. § 135 (1964 ed.) provides:

															"Whenever an application is made for a patent which, in the
opinion of the Commissioner, would interfere with any pending
application, or with any unexpired patent, he shall give notice
thereof. . . . 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. . . ."

															Patent Office Rule 204(b), 37 CFR § 1.204(b), provides:

															"When the filing date or effective filing date of an applicant
is subsequent to the filing date of a patentee, the applicant,
before an interference will be declared, shall file an affidavit
that he made the invention in controversy in this country, before
the filing date of the patentee . . . and, when required, the
applicant shall file an affidavit . . . setting forth facts which
would prima facie entitle him to an award of priority
relative to the filing date of the patentee."

															Judge Thurman Arnold has provided an irreverent description of
the way patent claims, including "interferences," are presented to
the Patent Office. See Monsanto Chemical Co. v. Coe, 79
U.S.App.D.C. 155, 145 F.2d 18.

															[ Footnote 3 ]

															"A homologous series is a family of chemically related
compounds, the composition of which varies from member to member by
CH(2) (one atom of carbon and two atoms of hydrogen). . . .
Chemists knowing the properties of one member of a series would, in
general, know what to expect in adjacent members." Application of Henze, 37 C.C.P.A.(Pat.) 1009, 1014, 181
F.2d 196, 200-201. See also In re Hass, 31 C.C.P.A.(Pat.)
895, 901, 141 F.2d 122, 125; Application of Norris, 37
C.C.P.A.(Pat.) 876, 179 F.2d 970; Application of Jones, 32
C.C.P.A.(Pat.) 1020, 149 F.2d 501. With respect to the inferior
predictability of steroid homologues, see infra, p. 383 U. S.
532 .

															[ Footnote 4 ]

															In addition to the clear conflict between the Patent Office and
the CCPA, there arguably exists one between the CCPA and the Court
of Appeals for the District of Columbia. See Petrocarbon
Limited v. Watson, 101 U.S.App.D.C. 214, 247 F.2d 800, cert. denied, 355 U.S. 955. But see Application of
Szwarc, 50 C.C.P.A.(Pat.) 1571, 1576-1583, 319 F.2d 277,
281-286.

															[ Footnote 5 ]

															The present case is the first in which the Government has taken
the position that § 1256 confers jurisdiction upon this Court to
review patent decisions in the CCPA. Prior to Glidden Co. v.
Zdanok, 370 U. S. 530 , the
Government was of the view that the Court lacked jurisdiction. See, e.g., the Brief in Opposition in Dalton v.
Marzall, No. 87, O.T. 1951, cert. denied, 342 U.S.
818. After the decision in Glidden, discussed infra at 383 U. S. 526 ,
the Government conceded the issue was a close one. See,
e.g., Brief in Opposition in In re Gruschwitz, No.
579, O.T. 1963, cert. denied, 375 U.S. 967.

															[ Footnote 6 ]

															We find no warrant for this curious limitation either in the
statutory language or in the legislative history of § 1256. Nor do
we find persuasive the circumstance that the Commissioner may not
appeal adverse decisions of the Board of Appeals. 35 U.S.C. §§ 141,
142, and 145 (1964 ed.). 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 seeking review of adverse decisions rendered by the
CCPA.

															[ Footnote 7 ]

															Act of March 2, 1927, c. 273, § 11, 44 Stat. 1335, 1336. See
Glidden Co. v. Zdanok, supra, at 370 U. S.
572 -579; Kurland & Wolfson, Supreme Court Review of
the Court of Customs and Patent Appeals, 18 Geo.Wash.L.Rev. 192
(1950). This remains the law. 35 U.S.C. §§ 141, 145.

															[ Footnote 8 ]

															Act of March 2, 1929, c. 488, 45 Stat. 1475.

															[ Footnote 9 ] See Kurland & Wolfson, op. cit. supra, n 7 at 196.

															[ Footnote 10 ]

															Apart from Postum, until enactment of § 1256 in 1948,
there existed no statutory basis for jurisdiction in these cases. See Robertson & Kirkham, Jurisdiction of the Supreme
Court of the United States, § 251 (Wolfson & Kurland ed.
1951).

															[ Footnote 11 ]

															This is not to say that a CCPA determination that an applicant
is entitled to a patent precludes a contrary result in a subsequent
infringement suit, any more than issuance of a patent by the Patent
Office or the decision in an earlier infringement action against a
different "infringer" has that effect. See, e.g., Graham v.
John Deere Co., ante, p. 383 U. S. 1 at 383 U. S. 4 . We
review decisions of the District Court under 35 U.S.C. § 145
although these are subject to the same measure of readjudication in
infringement suits. See Hoover Co. v. Coe, 325 U. S.
79 .

															[ Footnote 12 ]

															Respondent and the amicus curiae take a different view
than does the Government of precisely what the issue on the merits
is. They argue that the issue of "patentability" is not properly
before us, that the issue actually presented is whether the Primary
Examiner in the Patent Office has authority under Rule 204(b)
himself to evaluate the sufficiency of affidavits submitted under
that Rule.

															Both the Board of Appeals and the CCPA rejected this view and
focused instead on the question of what averments satisfy the
statutory requirement that a claimed chemical process be "useful."
We agree. First, the issue of "patentability" cannot be foreclosed
by the circumstance that the Patent Office -- which, according to
counsel for respondent, processes some 1,800 claims and issues 700
patents each week -- has already issued a patent to Ringold and
Rosenkranz, who asserted in their claim that their process yielded
useful products. See note
1 supra. Second, there is no basis for the proposition
that, even where an applicant for an interference presents a claim
which, on its face, is unpatentable, a complicated and frequently
lengthy factual inquiry into priority of invention must inexorably
take place. On the contrary, Rule 201(a), 37 CFR § 1.201(a),
defines an interference proceeding as one involving

															"two or more parties claiming substantially the same patentable invention, and may be instituted as soon as it
is determined that common patentable subject matter is
claimed. . . ."

															(Emphasis supplied.) See Application of Rogoff, 46
C.C.P.A.(Pat.) 733, 739, 261 F.2d 601, 606:

															"The question as to patentability of claims to an applicant must
be determined before any question of interference arises and claims
otherwise unpatentable to an applicant cannot be allowed merely in
order to set up an interference." See also Wirkler v. Perkins, 44 C.C.P.A.(Pat.) 1005,
1008, 245 F.2d 502, 504. Cf. Glass v. De Roo, 44
C.C.P.A.(Pat.) 723, 239 F.2d 402.

															The current version of Rule 203(a), 37 CFR § 1.203(a), makes it
explicit that the examiner, "[b]efore the declaration of
interference," must determine the patentability of the claim as to
each party. See also Rule 237, 37 CFR § 1.237.

															[ Footnote 13 ] See Act of April 10, 1790, c. 7, 1 Stat. 109; Act of
Feb. 21, 1793, c. 11, 1 Stat. 318; Act of July 4, 1836, c. 357, 5
Stat. 117; Act of July 8, 1870, c. 230, 16 Stat. 198; Rev.Stat. §
4886 (1874).

															[ Footnote 14 ]

															35 U.S.C. § 101 (1964 ed.).

															[ Footnote 15 ]

															Thus, in Application of Wilke, 50 C.C.P.A.(Pat.) 964,
314 F.2d 558, the court reversed a Patent Office denial of a
process claim, holding that 35 U.S.C. § 112 (1964 ed.) was
satisfied even though the specification recited only the manner in
which the process was to be used and not any use for the products
thereby yielded. See also Application of Adams, 50
C.C.P.A.(Pat.) 1185, 316 F.2d 476.

															In Application of Szwarc, 50 C.C.P.A.(Pat.) 1571, 319
F.2d 277, the court acknowledged that its view of the law
respecting utility of chemical processes had changed since Bremner. See generally Note, The Utility
Requirement in the Patent Law, 53 Geo.L.J. 154, 175-181 (1964).

															[ Footnote 16 ]

															Respondent couches the issue in terms of whether the process
yields a "known" product. We fail to see the relevance of the fact
that the product is "known," save to the extent that references to
a compound in scientific literature suggest that it might be a
subject of interest and possible investigation.

															[ Footnote 17 ]

															In light of our disposition of the case, we express no view as
to the patentability of a process whose sole demonstrated utility
is to yield a product shown to inhibit the growth of tumors in
laboratory animals. See Application of Hitchings, 52
C.C.P.A.(Pat.) 1141, 342 F.2d 80; Application of Bergel, 48 C.C.P.A.(Pat.) 1102, 292 F.2d 955; cf. Application of
Dodson, 48 C.C.P.A.(Pat.) 1125, 292 F.2d 943; Application
of Krimmel, 48 C.C.P.A.(Pat.) 1116, 292 F.2d 948. For a Patent
Office view, see Marcus, The Patent Office and
Pharmaceutical Invention, 47 J.Pat.Off.Soc. 669, 673-676
(1965).

															[ Footnote 18 ] See n 3, supra. [ Footnote 19 ] See respondent's letter requesting amendment, dated
July 21, 1960, Record, pp. 20-23. See also Application of
Adams, 50 C.C.P.A.(Pat.) 1185, 1190, 316 F.2d 476, 479-480
(concurring-dissenting opinion). In the present case, the Board of
Appeals found support in the Ringold article itself for the view
that "minor changes in the structure of a steroid may produce
profound changes in its biological activity." Record, p. 52.

															[ Footnote 20 ]

															Note on the Patent Laws, 3 Wheat.App. 13, 24. See also Justice Story's decisions on circuit in Lowell v. Lewis, 15 Fed.Cas. 1018 (No. 8568) (C.C.D.Mass.), and Bedford v.
Hunt, 3 Fed.Cas. 37 (No. 1217) (C.C.D.Mass.).

															[ Footnote 21 ]

															"As a reward for inventions and to encourage their disclosure,
the United States offers a seventeen-year monopoly to an inventor
who refrains from keeping his invention a trade secret." Universal Oil Prods. Co. v. Globe Oil & Ref. Co., 322 U. S. 471 , 322 U. S.
484 .

															[ Footnote 22 ] See Monsanto Chemical Co. v. Coe, 79 U.S.App.D.C. 155,
158-161, 145 F.2d 18, 21-24.

															[ Footnote 23 ] See, e.g., the decision below, 52 C.C.P.A.(Pat.) at
744, 333 F.2d at 237. See also Application of Bergel, 48
C.C.P.A.(Pat.) at 1105, 292 F.2d at 958. Cf. Application of
Nelson, 47 C.C.P.A.(Pat.) at 1043-1044, 280 F.2d at 180-181; Application of Folkers, 52 C.C.P.A.(Pat.) 1269, 344 F.2d
970.

															[ Footnote 24 ]

															The committee reports which preceded enactment of the 1952
revision of the patent laws disclose no intention to create such a
dichotomy, and in fact provide some evidence that the contrary was
assumed. Sen.Rep.No.1979, Committee on the Judiciary, 82d Cong., 2d
Sess., 5, 17; H.R.Rep.No.1923, Committee on the Judiciary, 82d
Cong., 2d Sess., 6, 17. Cf. Hoxie, A Patent Attorney's
View, 47 J.Pat.Off.Soc. 630, 636 (1965).

															[ Footnote 25 ] Application of Ruschig, 52 C.C.P.A.(Pat.) 1238, 1245,
343 F.2d 965, 970 (Rich, J.). See also Katz v. Horni Signal
Mfg. Corp., 145 F.2d 961 (C.A.2d Cir.).

															MR. JUSTICE HARLAN, concurring in part and dissenting in
part.

															While I join the Court's opinion on the issue of certiorari
jurisdiction, I cannot agree with its resolution of the important
question of patentability.

															Respondent has contended that a workable chemical process, which
is both new and sufficiently nonobvious to satisfy the patent
statute, is, by its existence alone, a contribution to chemistry
and "useful" as the statute employs that term. [ Footnote 2/1 ] Certainly this reading of "useful" in
the statute is within the scope of the constitutional grant, which
states only that, "[t]o promote the Progress of Science and useful
Arts," the exclusive right to "Writings and Discoveries" may be
secured for limited times to those who produce them. Art. I, § 8.
Yet the patent statute is somewhat differently worded, and is,
on Page 383 U. S. 537 its face, open both to respondent's construction and to the
contrary reading given it by the Court. In the absence of
legislative history on this issue, we are thrown back on policy and
practice. Because I believe that the Court's policy arguments are
not convincing, and that past practice favors the respondent, I
would reject the narrow definition of "useful" and uphold the
judgment of the Court of Customs and Patent Appeals (hereafter
CCPA).

															The Court's opinion sets out about half a dozen reasons in
support of its interpretation. Several of these arguments seem to
me to have almost no force. For instance, it is suggested that,

															"[u]ntil the process claim has been reduced to production of a
product shown to be useful, the metes and bounds of that monopoly
are not capable of precise delineation"

															(p. 383 U. S. 534 , ante ) and "[i]t may engross a vast, unknown, and perhaps
unknowable area" (p. 383 U. S. 534 , ante ). I fail to see the relevance of these assertions;
process claims are not disallowed because the products they produce
may be of "vast" importance nor, in any event, does advance
knowledge of a specific product use provide much safeguard on this
score or fix "metes and bounds" precisely since a hundred more uses
may be found after a patent is granted and greatly enhance its
value.

															The further argument that an established product use is part of
"[t]he basic quid pro quo " (p. 383 U. S. 534 , ante ) for the patent or is the requisite "successful
conclusion" (p. 383 U. S. 536 , ante ) of the inventor's search appears to beg the very
question whether the process is "useful" simply because it
facilitates further research into possible product uses. The same
infirmity seems to inhere in the Court's argument that chemical
products lacking immediate utility cannot be distinguished for
present purposes from the processes which create them, that
respondent appears to concede and the CCPA holds that Page 383 U. S. 538 the products are nonpatentable, and that, therefore, the
processes are nonpatentable. Assuming that the two classes cannot
be distinguished, a point not adequately considered in the briefs,
and assuming further that the CCPA has firmly held such products
nonpatentable, [ Footnote 2/2 ] this
permits us to conclude only that the CCPA is wrong either as to the
products or as to the processes, and affords no basis for deciding
whether both or neither should be patentable absent a specific
product use.

															More to the point, I think, are the Court's remaining,
prudential arguments against patentability: namely, that disclosure
induced by allowing a patent is partly undercut by patent
application drafting techniques, that disclosure may occur without
granting a patent, and that a patent will discourage others from
inventing uses for the product. How far opaque drafting may lessen
the public benefits resulting from the issuance of a patent is not
shown by any evidence in this case, but, more important, the
argument operates against all patents, and gives no reason for
singling out the class involved here. The thought that these
inventions may be more likely than most to be disclosed even if
patents are not allowed may have more force; but, while empirical
study of the industry might reveal that chemical researchers would
behave in this fashion, the abstractly logical choice for them
seems to me to maintain secrecy until a product use can be
discovered. As to discouraging the search by Page 383 U. S. 539 others for product uses, there is no doubt this risk exists, but
the price paid for any patent is that research on other uses or
improvements may be hampered because the original patentee will
reap much of the reward. From the standpoint of the public
interest, the Constitution seems to have resolved that choice in
favor of patentability.

															What I find most troubling about the result reached by the Court
is the impact it may have on chemical research. Chemistry is a
highly interrelated field, and a tangible benefit for society may
be the outcome of a number of different discoveries, one discovery
building upon the next. To encourage one chemist or research
facility to invent and disseminate new processes and products may
be vital to progress, although the product or process be without
"utility" as the Court defines the term, because that discovery
permits someone else to take a further but perhaps less difficult
step leading to a commercially useful item. In my view, our
awareness in this age of the importance of achieving and
publicizing basic research should lead this Court to resolve
uncertainties in its favor, and uphold the respondent's position in
this case.

															This position is strengthened, I think, by what appears to have
been the practice of the Patent Office during most of this century.
While available proof is not conclusive, the commentators seem to
be in agreement that, until Application of Bremner, 37
C.C.P.A.(Pat.) 1032, 182 F.2d 216, in 1950, chemical patent
applications were commonly granted although no resulting end use
was stated or the statement was in extremely broad terms. [ Footnote 2/3 ] Taking this to be true, Bremner represented Page 383 U. S. 540 a deviation from established practice which the CCPA has now
sought to remedy in part only to find that the Patent Office does
not want to return to the beaten track. If usefulness was typically
regarded as inherent during a long and prolific period of chemical
research and development in this country, surely this is added
reason why the Court's result should not be adopted until Congress
expressly mandates it, presumably on the basis of empirical data
which this Court does not possess.

															Fully recognizing that there is ample room for disagreement on
this problem when, as here, it is reviewed in the abstract, I
believe the decision below should be affirmed.

															[ Footnote 2/1 ]

															The statute in pertinent part is set out in the Court's opinion,
p. 383 U. S. 529 , ante. [ Footnote 2/2 ]

															Any concession by respondent would hardly be controlling on an
issue of this general importance, but I am less clear than the
Court that such a concession exists. See, e.g., Brief for
Respondent, p. 53. As to the CCPA, it is quite true that that court
purports in the very case under review and in others to distinguish
product patents, although its actual practice may be somewhat less
firm. See Application of Adams, 50 C.C.PA.(Pat.) 1185, 316
F.2d 476. Application of Nelson, 47 C.C.P.A.(Pat.) 1031,
280 F.2d 172.

															[ Footnote 2/3 ]

															See, e.g., the statement of a Patent Office
Examiner-in-Chief:

															"Until recently, it was also rather common to get patents on
chemical compounds in cases where no use was indicated for the
claimed compounds or in which a very broad indication or suggestion
as to use was included in the application. ( Bremner and
another later ruling) . . . have put an end to this practice."

															Wolffe, Adequacy of Disclosure as Regards Specific Embodiment
and Use of Invention, 41 J.Pat.Off.Soc. (1959). The Government's
brief in this case is in accord:

															"[I]t was apparently assumed by the Patent Office [prior to
1950] . . . that chemical compounds were necessarily useful . . . ,
and that specific inquiry beyond the success of the process was
therefore unnecessary. . . ."

															Brief for the Commissioner, p. 25. See also Cohen &
Schwartz, Do Chemical Intermediates Have Patentable Utility? 29
Geo.Wash.L.Rev. 87, 91 (1960); Note, 53 Geo.L.J. 154, 183 (1964);
14 Am.U.L.Rev. 78 (1964).


U.S. Supreme Court Dann v. Johnston, 425
U.S. 219 (1976) Dann v. Johnston No. 74-1033 Argued December 9,
1975 Decided March 31,
1976 425
U.S. 219 CERTIORARI TO THE UNITED STATES
COURT OF CUSTOMS AND PATENT
APPEALS Syllabus Respondent's "machine system for automatic record-keeping of
bank checks and deposits," under which checks and deposits are
customer-labeled with code categories which are "read," and then
processed by a data processor, such as a programmable electronic
digital computer, having data storage files and a control system,
permitting a bank to furnish a customer with an individual and
categorized breakdown of his transactions during the period in
question, held unpatentable on grounds of obviousness. 35
U.S.C. § 103. Pp. 425 U. S.
225 -230.

															502 F.2d 765, reversed and remanded.

															MARSHALL, J., delivered the opinion of the Court, in which all
Members joined except BLACKMUN and STEVENS, JJ., who took no part
in the consideration or decision of the case. Page 425 U. S. 220 MR. JUSTICE MARSHALL delivered the opinion of the Court.

															Respondent has applied for a patent on what is described in his
patent application as a "machine system for automatic
record-keeping of bank checks and deposits." The system permits a
bank to furnish a customer with subtotals of various categories of
transactions completed in connection with the customer's single
account, thus saving the customer the time and/or expense of
conducting this bookkeeping himself. As respondent has noted,
the

															"invention is being sold as a computer program to banks and to
other data processing companies so that they can perform these data
processing services for depositors."

															Brief for Respondent 19A; Application of Johnston, 502
F.2d 765 (CCPA 1974).

															Petitioner and respondent, as well as various amici, have presented lengthy arguments addressed to the question of the
general patentability of computer programs. Cf. Gottschalk v.
Benson, 409 U. S. 63 (1972). We find no need to treat that question in this case,
however, because we conclude that, in any event, respondent's
system is unpatentable on grounds of obviousness. 35 U.S.C. § 103.
Since the United States Court of Customs and Patent Appeals (CCPA)
found respondent's system to be patentable, Application of
Johnston, supra, the decision of that court is accordingly
reversed. I While respondent's patent application pertains to the highly
esoteric field of computer technology, Page 425 U. S. 221 the basic functioning of his invention is not difficult to
comprehend. Under respondent's system, a bank customer labels each
check that he writes with a numerical category code corresponding
to the purpose for which the funds are being expended. For
instance, "food expenditures" might be a category coded "123,"
"fuel expenditures" a category coded "124," and "rent" still
another category coded "125." Similarly, on each deposit slip, the
customer, again through a category code, indicates the source of
the funds that he is depositing. When the checks and deposit slips
are processed by the bank, the category codes are entered upon them
in magnetic ink characters, just as, under existing procedures, the
amount of the check or deposit is entered in such characters.
Entries in magnetic ink allow the information associated with them
to be "read" by special document-reading devices and then processed
by data processors. On being read by such a device, the coded
records of the customer's transactions are electronically stored in
what respondent terms a "transaction file." Respondent's
application describes the steps from this point as follows:

															"To process the transaction file, the . . . system employs a
data processor, such as a programmable electronic digital computer,
having certain data storage files and a control system. In addition
to the transaction file, a master record-keeping file is used to
store all of the records required for each customer in accordance
with the customer's own chart of accounts. The latter is
individually designed to the customer's needs and also constructed
to cooperate with the control system in the processing of the
customer's transactions. The control system directs the generation
of periodic output Page 425 U. S. 222 reports for the customer which present the customer's
transaction records in accordance with his own chart of accounts
and desired accounting procedures."

															Pet. for Cert. 4A-5A.

															Thus, when the time comes for the bank customer's regular
periodic statement to be rendered, the programmed computer sorts
out the entries in the various categories and produces a statement
which groups the entries according to category and which gives
subtotals for each category. The customer can then quickly see how
much he spent or received in any given category during the period
in question. Moreover, according to respondent, the system can
"[adapt] to whatever variations in ledger format a user may
specify." Brief for Respondent 66.

															In further description of the control system that is used in the
invention, respondent's application recites that it is made up of a
general control and a master control. The general control directs
the processing operations common to most customers and is in the
form of a software computer program, i.e., a program that
is meant to be used in a general purpose digital computer. The
master control, directing the operations that vary on an individual
basis with each customer, is in the form of a separate sequence of
records for each customer containing suitable machine instruction
mechanisms along with the customer's financial data. Respondent's
application sets out a flow chart of a program compatible with an
IBM 1400 computer which would effectuate his system. II Under respondent's invention, then, a general purpose computer
is programmed to provide bank customers with an individualized and
categorized breakdown of their transactions during the period in
question. Page 425 U. S. 223 After reviewing respondent's patent application, the patent
examiner rejected all the claims therein. He found that
respondent's claims were invalid as being anticipated by the prior
art, 35 U.S.C. § 102, and as not "particularly pointing out and
distinctly claiming" what respondent was urging to be his
invention. § 112.

															Respondent appealed to the Patent and Trademark Office Board of
Appeals. The Board rejected respondent's application on several
grounds. It found first that, under § 112, the application was
indefinite, and did not distinctly enough claim what respondent was
urging to be his invention. It also concluded that respondent's
claims were invalid under § 101 because they claimed nonstatutory
subject matter. According to the Board, computer-related inventions
which extend "beyond the field of technology . . . are
nonstatutory," Pet. for Cert. 31A. See Application of
Foster, 58 C.C.P.A. (Pat.) 1001, 1004, 438 F.2d 1011, 1015
(1971); Application of Musgrave, 57 C.C.P.A. (Pat.) 1352,
431 F.2d 882 (1970), and respondent's claims were viewed to be
"nontechnological." Finally, respondent's claims were rejected on
grounds of obviousness. 35 U.S.C. § 103. The Board found that
respondent's claims were obvious variations of established uses of
digital computers in banking and obvious variations of an
invention, developed for use in business organizations, that had
already been patented. Dirks, U.S. Patent No. 3,343,133.

															The CCPA, in a 3-2 ruling, reversed the decision of the Board
and held respondent's invention to be patentable. The court began
by distinguishing its view of respondent's invention as a
" record-keeping machine system for financial
accounts'" from the Board's rather negative view of the claims as
going solely to the "`relationship of Page 425 U. S. 224 a bank and its customers.'" 502 F.2d at 770 (emphasis in CCPA
opinion). As such, the CCPA held, respondent's system was "clearly
within the `technological arts,'" id. at 771, and was
therefore statutory subject matter under 35 U.S.C. § 101. Moreover,
the court held that respondent's claims were narrowly enough drawn
and sufficiently detailed to pass muster under the definiteness
requirements of § 112. Dealing with the final area of the Board's
rejection, the CCPA found that neither established banking practice
nor the Dirks patent rendered respondent's system "obvious to one
of ordinary skill in the art who did not have [respondent's]
specification before him." 502 F.2d at 772.

															In order to hold respondent's invention to be patentable, the
CCPA also found it necessary to distinguish this Court's decision
in Gottschalk v. Benson, 409 U. S. 63 (1972), handed down some 13 months subsequent to the Board's ruling
in the instant case. In Benson, the respondent sought to
patent as a "new and useful process," 35 U.S.C. § 101, "a method of
programming a general purpose digital computer to convert signals
from binary-coded decimal form into pure binary form." 409 U.S. at 409 U. S. 65 . As
we observed: "The claims were not limited to any particular art or
technology, to any particular apparatus or machinery, or to any
particular end use." Id. at 64. Our limited holding, id. at 409 U. S. 71 ,
was that respondent's method was not a patentable "process" as that
term is defined in 35 U.S.C. § 100(b). [ Footnote 1 ]

															The Solicitor of the Patent Office argued before the CCPA that Benson's holding of nonpatentability as to the computer
program in that case was controlling here. Page 425 U. S. 225 However, the CCPA concluded that, while Benson involved
a claim as to the patentability of a "process," respondent in this
case was advancing claims as to the patentability of an "apparatus"
or "machine" which did not involve discoveries so abstract as to be
unpatentable:

															"'The issue considered by the Supreme Court in Benson was a narrow one, namely, is a formula for converting binary coded
decimal numerals into pure binary numerals by a series of
mathematical calculations a patentable process ?' (Emphasis
added.) [Quoting In re Christensen, 478 F.2d 1392, 1394
(CCPA 1973).]"

															"[T]he instant claims in apparatus form do not claim or
encompass a law of nature, a mathematical formula, or an
algorithm."

															502 F.2d at 771 (emphasis in CCPA opinion). Having disposed of
the Board's rejections and having distinguished Benson to
its satisfaction, the court held respondent's invention to be
patentable. The Commissioner of Patents sought review in this
Court, and we granted certiorari. 421 U.S. 962 (1975). We hold that
respondent's invention was obvious under 35 U.S.C. § 103, and
therefore reverse. III As a judicial test, "invention" -- i.e., "an exercise
of the inventive faculty," McClain v. Ortmayer, 141 U. S. 419 , 141 U. S. 427 (1891) -- has long been regarded as an absolute prerequisite to
patentability. See, e.g., Keystone Driller Co. v. Northwest
Engineering Corp., 294 U. S. 42 (1935); Sharp v. Stamping Co., 103 U.
S. 250 (1880); Hotchkiss v.
Greenwood , 11 How. 248 (1851). However, it was only
in 1952 that Congress, in the interest of "uniformity and
definiteness," articulated the requirement in a statute, Page 425 U. S. 226 framing it as a requirement of "nonobviousness." [ Footnote 2 ] Section 103 of the Patent Act of
1952, 35 U.S.C. § 103, provides in full:

															"A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner
in which the invention was made."

															This Court treated the scope of § 103 in detail in Graham v.
John Deere Co., 383 U. S. 1 (1966).
There, we held that § 103 "was not intended by Congress to change
the general level of patentable invention," but was meant

															"merely as a codification of judicial precedents . . . with
congressional directions that inquiries into the obviousness of the
subject matter sought to be patented are a prerequisite to
patentability." Id. at 383 U. S. 17 .
While recognizing the inevitability of difficulty in making the
determination in some cases, we also set out in Graham,
supra, the central factors relevant to any inquiry into
obviousness: "the scope and content of the prior art," the
"differences between the prior art and the claims at issue," and
"the level of ordinary skill in the pertinent art." Ibid. Guided by these factors, we proceed to an inquiry into the
obviousness of respondent's system.

															As noted, supra at 425 U. S. 223 ,
the Patent and Trademark Office Board of Appeals relied on two
elements in the prior art in reaching its conclusion that
respondent's Page 425 U. S. 227 system was obvious. We find both to be highly significant. The
first was the nature of the current use of data processing
equipment and computer programs in the banking industry. As
respondent's application itself observes, that use is
extensive:

															"Automatic data processing equipments employing digital
computers have been developed for the handling of much of the
record-keeping operations involved in a banking system. The checks
and deposit slips are automatically processed by forming those
items as machine-readable records. . . . With such machine systems,
most of the extensive data handling required in a bank can be
performed automatically."

															Pet. for Cert. 3A.

															It is through the use of such data processing equipment that
periodic statements are ordinarily given to a bank customer on each
of the several accounts that he may have at a given bank. Under
respondent's system, what might previously have been separate
accounts are treated as a single account, and the customer can see
on a single statement the status and progress of each of his
"subaccounts." Respondent's "category code" scheme, see
supra at 425 U. S. 221 ,
is, we think, closely analogous to a bank's offering its customers
multiple accounts from which to choose for making a deposit or
writing a check. Indeed, as noted by the Board, the addition of a
category number, varying with the nature of the transaction, to the
end of a bank customer's regular account number, creates, "in
effect, a series of different and distinct account numbers. . . ."
Pet. for Cert. 34A. Moreover, we note that banks have long
segregated debits attributable to service charges within any given
separate account, and have rendered their customers subtotals for
those charges.

															The utilization of automatic data processing equipment in the
traditional separate account system is, of course, Page 425 U. S. 228 somewhat different from the system encompassed by respondent's
invention. As the CCPA noted, respondent's invention does something
other than "provide a customer with . . . a summary sheet
consisting of net totals of plural separate accounts which a
customer may have at a bank." 502 F.2d at 771. However, it must be
remembered that the "obviousness" test of § 103 is not one which
turns on whether an invention is equivalent to some element in the
prior art, but rather whether the difference between the prior art
and the subject matter in question "is a difference sufficient to
render the claimed subject matter unobvious to one skilled in the
applicable art. . . ." Id. at 772 (Markey, C.J.,
dissenting).

															There is no need to make the obviousness determination in this
case turn solely on the nature of the current use of data
processing and computer programming in the banking industry. For,
as noted, the Board pointed to a second factor -- a patent issued
to Gerhard Dirks -- which also supports a conclusion of
obviousness. The Dirks patent discloses a complex automatic data
processing system using a programmed digital computer for use in a
large business organization. Under the system, transaction and
balance files can be kept and updated for each department of the
organization. The Dirks system allows a breakdown within each
department of various areas, e.g., of different types of
expenses. Moreover, the system is sufficiently flexible to provide
additional breakdowns of "sub-areas" within the areas, and can
record and store specially designated information regarding each of
any department's transactions. Thus, for instance, under the Dirks
system, the disbursing office of a corporation can continually be
kept apprised of the precise level and nature of the corporation's
disbursements within various areas or, as the Dirks patent terms
them, "Item Groups." Page 425 U. S. 229 Again, as was the case with the prior art within the banking
industry, the Dirks invention is not equivalent to respondent's
system. However, the departments of the business organization and
the areas or "Item Groups" under the Dirks system are closely
analogous to the bank customers and category number designations
respectively under respondent's system. And each shares a similar
capacity to provide breakdowns within its "Item Groups" or category
numbers. While the Dirks invention is not designed specifically for
application to the banking industry, many of its characteristics
and capabilities are similar to those of respondent's system. Cf. Graham, 383 U.S. at 383 U. S. 35 .

															In making the determination of "obviousness," it is important to
remember that the criterion is measured not in terms of what would
be obvious to a layman, but rather what would be obvious to one
"reasonably skilled in [the applicable] art." Id. at 383 U. S. 37 . In
the context of the subject matter of the instant case, it can be
assumed that such a hypothetical person would have been aware both
of the nature of the extensive use of data processing systems in
the banking industry and of the system encompassed in the Dirks
patent. While computer technology is an exploding one, "[i]t is but
an evenhanded application to require that those persons granted the
benefit of a patent monopoly be charged with an awareness" of that
technology. Id. at 383 U. S. 19 .

															Assuming such an awareness, respondent's system would, we think,
have been obvious to one "reasonably skilled in [the applicable]
art." There may be differences between respondent's invention and
the state of the prior art. Respondent makes much of his system's
ability to allow "a large number of small users to get the benefit
of large-scale electronic computer equipment and still continue to
use their individual ledger format and Page 425 U. S. 230 bookkeeping methods." Brief for Respondent 65. It may be that
that ability is not possessed to the same extent either by existing
machine systems in the banking industry or by the Dirks system.
[ Footnote 3 ] But the mere
existence of differences between the prior art and an invention
does not establish the invention's nonobviousness. The gap between
the prior art and respondent's system is simply not so great as to
render the system nonobvious to one reasonably skilled in the art.
[ Footnote 4 ]

															Accordingly, we reverse the Court of Customs and Patent Appeals
and remand this case to that court for further proceedings
consistent with this opinion. So ordered. MR. JUSTICE BLACKMUN and MR. JUSTICE STEVENS took no part in the
consideration or decision of this case.

															[ Footnote 1 ]

															"The term 'process' means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material."

															35 U.S.C. § 100(b).

															[ Footnote 2 ]

															S.Rep. No.1979, 82d Cong., 2d Sess., 6 (1952); H.R.Rep. No.1923,
82d Cong., 2d Sess., 7 (1952).

															[ Footnote 3 ]

															The Dirks patent does allow

															"the departments or other organizational users [ i.e., the analogues to bank customers under respondent's invention, to]
retain their authority over operative file systems,"

															and indicates that "[p]rogramming is very easy, and different
programs are very easily coordinated."

															[ Footnote 4 ]

															While "commercial success without invention will not make
patentability," A&P Tea Co. v. Superemarket Corp., 340 U. S. 147 , 340 U. S. 153 (1950), we did indicate in Graham v. John Deere Co., 383 U. S. 1 (1966),
that "secondary considerations [such] as commercial success, long
felt but unsolved needs, [and] failure of others" may be relevant
in a determination of obviousness. Id. at 383 U. S. 17 .
Respondent does not contend, nor can we conclude, that any of these
secondary considerations offer any substantial support for his
claims of nonobviousness.