Appeal No. 2003-2017 Page 18
Application No. 09/802,116
specification provides no information about the activity of the protein encoded by
the claimed polynucleotides, it provides no guidance as to how to interpret the
results of a DNA chip-based gene expression assay based on the claimed
polynucleotides.
The same problem afflicts Appellants’ assertions that the claimed
polynucleotides can be used to map a particular chromosomal locus or to define
the exon splice-junctions of the genomic gene. The specification provides no
meaningful guidance regarding how to use such information in any practical way.
Assume, for example, that SEQ ID NO:1 hybridizes to a specific part of human
chromosome 3, or that SEQ ID NO:1 can be used to show that the chromosomal
gene has an exon splice junction between nucleotides 103 and 104: the
specification provides no guidance on how such information would allow those
skilled in the art to use the claimed polynucleotides in a specific, substantial way.
By contrast, if the specification disclosed, for example, that SEQ ID NO:1
hybridized adjacent to a chromosomal locus associated with a known disease
(e.g., a locus susceptible to a cancer-causing translocation), the sequence would
have an apparent utility in disease diagnosis. However, without disclosure of a
specific use for the resulting data, using the claimed sequences for mapping or
determining exon splice-junctions amounts to research on the claimed
polynucleotides themselves.
In effect, Appellants’ position is that the claimed polynucleotides are useful
because those of skill in the art could experiment with them and figure out for
themselves what any observed experimental results might mean. We do not
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