Name: In re Citron
- Item Type: case
- Cite: 325 F.2d 248
- Year: 1963
- Bluebook Cite: In re Citron, 325 F.2d 248 (C.C.P.A. 1963).
- Author:
- url: 325 F.2d 248
Summary
Appeal of rejection of application claiming precipitate allegedly extracted from cancer tissue and serum allegedly containing the precipitate and producing antibodies when injected into cancer free animal. The claims were rejected for lack of utility. The examiner, in rejecting the claims, required proof of the utility alleged in the specification (curing cancer). The Patent Office Board of Appeals affirmed the rejection, stating that the allegations of utility “cannot be accepted as operative absent clear and convincing proof thereof. The compositions have been alleged to be cures for cancer, including human cancer, and in view of the art knowledge of the lack of a cure for cancer and the absence of any clinical data to substantiate the allegation, the claims include compositions directed to an apparently inoperative utility.”
The court affirmed the rejection of the claims under 35 U.S.C. § 101 for lack of utility. The court required that when an alleged utility is of significant public importance and when the utility seems incredible based on the state of the art, the applicant must establish the asserted utility by “acceptable proof.” Thus, the court rejected the claims, finding that “
the defect here is that in spite of the somewhat grandiose claims of appellant's specification, purportedly based on actual tests or experiments, not one iota of evidence has been produced tending even to show that tests were actually conducted.”
Excerpts and notes
QUOTE -- We approve the board's decision affirming the rejection based on section 101 and the rationale that where claimed compounds are alleged in the specification to have a utility of as much public importance as is the effective treatment of cancer, which alleged utility appears to be incredible in the light of the knowledge of the art, or factually misleading, applicant must establish the asserted utility by acceptable proof.
QUOTE -- The board's opinion in Ex parte Moore et al., {128 U.S.P.Q. 8}, contains some points which we think worthy of mention and approval. One is that a rejection, as here, for the purpose of enforcing compliance with the requirement that statements of utility deemed incredible or misleading must be either removed or proved is proper notwithstanding there may also be present in the application other proper and acceptable assertions of utility. Another is that the reason behind the requirement, as pointed out by the examiner in the Moore case, is that it is against public policy to place the oblique imprimatur of the Government via the patent grant on incredible or misleading unproven assertions in view of the possibility of exploitation of such statements in issued patents by unscrupulous persons. This does not mean, however, as is sometimes implied from the dictum in Isenstead v. Watson, D.C., 157 F.Supp. 7, that there should be a reluctance to grant patents on new chemical compounds just because they may eventually find use in the treatment of human disease. We are here concerned only with what assertions are made about the utility of compounds or compositions.
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