Brenner v. Manson
United States Supreme Court
383 U.S. 519 (1966)
Manson (plaintiff) filed a 1960 patent application for a process making known steroids; the examiner rejected it for failing to show sufficient utility for the resulting compound, and Manson tried to establish utility by citing an article showing a similar steroid worked as a tumor inhibitor. The Board of Appeals rejected that argument, finding mere similarity to another useful compound, without proof Manson's own steroid actually worked as a tumor inhibitor, was not enough. The CCPA reversed, holding an applicant need not prove utility for a known chemical product so long as it isn't harmful to the public, and the Commissioner of Patents (plaintiff on certiorari) sought Supreme Court review.
Whether, for chemical inventions, the patent utility requirement is satisfied only if the process and the product it creates, as they existed at the time of the patent application, confer a specific, substantial benefit on the public.