Interference No. 104,436 Paper 98
Shyamala v. Hillman Page 28
SCHAFER, Administrative Patent Judge concurring.
Ijoin in the majority's opinion on priority, but write separately because I would hold, as an
alternative basis for decision, that Shyamala's corresponding claims are not patentable. The
utility requirement demands more than some trifling use. The use must be specific, credible, and
-substantial. Brenner v. Manson, 383 U.S. 519, 534 (1966). Shyarnala's purported utility, tissue
typing, is not credible or substantial. Indeed, the assay in question does not even identify the
tissue ripe. Instead, it distinguishes between muscle tissue like cardiac and striated muscle on
the one hand, and other tissues, specifically brain, kidney, liver, lung, pancreas, and spleen tissue.
It has long been routine to distinguish between muscle and non-muscle tissue using a
n-dcroscope. Shyamala's specification offers no hint as to why one skilled in the art would go to
all the trouble of probing for otherwise useless NIT mRNA when the standard microscopic
method is cheaper, known to be reliable, and within the routine skill of a home hobbyist. In
short, the purported utility foi Shyamala's remaining claims is neither substantial nor credible.
One can only wonder why Hillman did not do more to develop this issue, but Hillman's inaction
does not make Shyarnala's claims patentable.
4CZHAVRI)-E. S6L4
Administrative Patent Judge
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