[20] The idea that commercial marketability was an element of utility was expressly rejected in Studiengesellschaft Kohle v. Eastman Kodak, 206 USPQ 1315 (5th Cir. 1980).

[21] 148 USPQ 689 (S.Ct. 1966).

[22] See Monsanto Chemical Co. v. Coe, 145 F. 2d 18, 21-24, 62 USPQ 37, 43-44 (D.C. Cir.).

[23] The Federal Circuit did, however, point out the need for a specific utility in a chemical case in 1993 in In re Ziegler, 26 USPQ2d 1600.

[24] See, for example, Nelson v. Bowler, 206 USPQ 881 (CCPA 1980). The court noted that data on "pharmacological activity may manifest a practical utility even though they may not establish a specific therapeutic use".

[25] In re Langer, 183 USPQ 288 (CCPA 1974).

[26]In ex parte Aggarwa, 23 USPQ2d 1334 (1992) the PTO Board of Appeals and Interferences commented that if challenged as to the utility of a claim covering a medical use the applicant would have to "provide evidence showing substantial activity in screening tests customarily used and accepted as predictive of human activity” for the type of chemical used. As long as the utility in question is clearly stated in the application as filed, evidence to support that assertion of utility can be submitted later. In re Marzocchi, 439 F.2d 224, 169 USPQ 370 (CCPA 1971). If the application describes more than one use but efficacy in all cannot be demonstrated, the PTO can require deletion of references to the unproven uses from the specification. In re Gottlieb, 140 USPQ 665 (CCPA 1964).

[27] The practice changed after Ex parte Krepelka, 231 USPQ 746 (Bd of Apps 1986).

[28] 51 F.3d 1560, 34 USPQ2d 1436.