Chapter §10.08

• Jurisdiction: United States

§10.08 Utility Versus How-To-Use Requirement of §112, ¶1

If the patent applicant fails to assert a credible utility for her invention, the USPTO will generally enter both a §101 rejection for lack of utility of the claimed invention as well as a §112, ¶1 non-enablement rejection for the failure of the patent application to adequately teach how to use the invention. Both rejections are made because "the how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. §101 that the specification disclose as a matter of fact a practical utility for the invention."¹⁰⁴ By definition, "if [certain] compositions are in fact useless, appellant's specification cannot have taught how to use them."¹⁰⁵ Thus, a lack of utility can support both a rejection under §101 and under §112, ¶1.

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Notes:

^[104] In re Cortright, 165 F.3d 1353, 1356 (Fed. Cir. 1999) (quoting In re Ziegler, 992 F.2d 1197, 1200 (Fed. Cir. 1993)).

^[105] In re...