Brenner, Commissioner Of Patents v. Manson

383 U.S. 519 (1966)

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Nature of the Case

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Facts

In December 1957, Ringold and Rosenkranz applied for a patent on an allegedly novel process for making certain known steroids. They claimed priority as of December 17, 1956, the date on which they had filed for a Mexican patent. In January 1960, P filed an application to patent precisely the same process described by Ringold and Rosenkranz. P asserted that it was he who had discovered the process and that he had done so before December 17, 1956. P requested that an 'interference' be declared. D denied P's application, and the denial was affirmed by the Board of Appeals. The ground for rejection was the failure 'to disclose any utility for' the chemical compound produced by the process. This opinion was not cured by reference to an article in the November 1956 issue of the Journal of Organic Chemistry, which revealed that steroids of a class which included the compound were undergoing screening for possible tumor-inhibiting effects in mice and that a homolog adjacent to P's steroid had proven effective in that role. The Court of Customs and Patent Appeals reversed. It held '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.' D appealed and the Supreme Court granted certiorari.