In re Bergel

In re Bergel
292 F.2d 955
Bluebook cite
In re Bergel, 292 F.2d 955 (C.C.P.A. 1961).
((lex: 292 F.2d 955)
Item Type
Appeal from rejection by USPTO Board of Appeals. The invention at issue related to chemotherapeutic agents and processes for manufacturing them. With regard to the § 101 utility rejection, the applicant’s asserted utility was “to provide an improved compound having tumour growth inhibitory action . . . .” Id. at 957. The applicant explained that the agents were effective when tested against transplanted Walker rat carcinoma. The board rejected this asserted utility, reasoning that the protection of rats from cancer is not a sufficient utility, and stating that “the elimination of rodents themselves would seem to be a more desirable objective.” Id. at 957.

The court reversed, finding the board’s position “untenable.” Id. at 957. The court held that “{t}hat appellants' compounds actually do inhibit the growth of the transplanted cancer strain is not questioned. In our opinion that achievement is sufficient to satisfy the express language of Section 101, and is in harmony with the basic constitutional concept of promoting the progress of science and the useful arts.” Id. at 958. Additionally, the court was receptive of the applicant’s argument that there was utility in successful laboratory rat tests “because if a failure was made in the pharmacological tests, then lack of utility would be shown and the compounds in question would be discarded and not tried on human patients.” Id. at 957. However, the court noted that its holding was “influenced by a background of common knowledge that cancer is one of the dreadest of all diseases” and cautioned that the “decision here is based on the instant facts, and should not be construed as laying down a sweeping principle that any and all compounds are in and of themselves ‘useful’.” Id. at 958.

Excerpts and Summaries

Sunday 19 of October, 2008 16:26:46 GMT
by Unknown
Sunday 19 of October, 2008 16:26:46 GMT
by Unknown

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