383 U.S. 519 (1966), 58, Brenner v. Manson

Docket Nº:No. 58
Citation:383 U.S. 519, 86 S.Ct. 1033, 16 L.Ed.2d 69
Party Name:Brenner v. Manson
Case Date:March 21, 1966
Court:United States Supreme Court

Page 519

383 U.S. 519 (1966)

86 S.Ct. 1033, 16 L.Ed.2d 69




No. 58

United States Supreme Court

March 21, 1966

Argued November 17, 1965




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.


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. 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. 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. 528-536.

(a) One may patent only that which is useful. Pp. 528-529, 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. 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. 532-536.

Page 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. 532-536.

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

FORTAS, J., lead opinion

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.1 They claimed

Page 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, [86 S.Ct. 1035] 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.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 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 homologue3 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,4 as well as to answer the question concerning our certiorari jurisdiction.

Page 523


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 Government5 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.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

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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 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

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an adjudication [86 S.Ct. 1037] in the Court of Appeals.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.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.9 Compare Federal Communications Comm'n v. Pottsville Broadcasting Co., 309 U.S. 134, 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.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

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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...

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