In re Fisher

Name

In re Fisher

Cite

421 F.3d 1365

Year

2005

Bluebook cite

In re Fisher, 421 F.3d 1365 (Fed. Cir. 2005).

Author

URL

421 F.3d 1365

Item Type

case

Summary

Appeal from decision of USPTO Board of Appeals finding claims unpatentable for lack of utility and enablement. The invention at issue involved purified nucleic acid sequences that encode proteins and protein fragments in maize plants. The sequences are known as “expressed sequence tags” or “ESTs”. The examiner rejected the claims for lack of “specific and substantial” utility. The claims did not have “specific” utility because “the disclosed uses were not specific to the claimed ESTs, but instead were generally applicable to any EST.” Id. at 1368. The claims did not have “substantial” utility because “there was no known use for the proteins produced as final products resulting from processes involving the claimed ESTs.” Id. at 1368. The board affirmed the examiners rejection for lack of specific and substantial utility.

The court affirmed, agreeing that the claims did not have a specific and substantial utility. Notably, the court rejected the argument that the ESTs had utility as research intermediaries, because they did not offer an “intermediate, real world benefit in a variety of applications . . . .” Id. at 1373.

Excerpts and Summaries

Created

Sunday 02 of November, 2008 21:23:47 GMT
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LastModif

Sunday 02 of November, 2008 21:23:47 GMT
by Unknown