Appeal No. 2003-1794 Page 16
Application No. 09/804,969
Appellants also argue that the claimed polynucleotides are useful because
they can be used for purposes that do not depend on the activity or function of
the encoded polypeptide. Appellants argue, for example, that
knowledge of the exact function or role of the presently claimed
sequence is not required to track expression patterns using a DNA
chip. . . . [T]hose skilled in the art would instantly recognize that the
present nucleotide sequence would be an ideal, novel candidate for
assessing gene expression using, for example, DNA chips. . . .
Such “DNA chips” clearly have utility, as evidenced by hundreds of
issued U.S. Patents. . . . Clearly, compositions that enhance the
utility of such DNA chips, such as the presently claimed nucleotide
sequence, must also be useful.
Appeal Brief, pages 6-7 (emphases in original).
Appellants argue that, in addition to their use in “DNA chips”, the claimed
sequences are also useful in “localizing the specific region of the human
chromosome containing the gene encoding the given polynucleotide [sic,
polypeptide].” Id., pages 9-10. More particularly, Appellants argue that
[t]he presently claimed polynucleotide sequence provides
biologically validated empirical data (e.g., showing which
sequences are transcribed, spliced, and polyadenylated) that
specifically define that portion of the corresponding genomic locus
that actually encodes exon sequence.
Id., page 10. Appellants argue that “the described sequences are useful for
functionally defining exon splice-junctions,” and that “the practical scientific value
of expressed, spliced, and polyadenylated mRNA sequences is readily apparent
to those skilled in the relevant biological and biochemical arts.” Id.
We are not persuaded by Appellants’ argument. We find that the asserted
uses of the claimed polynucleotides—as a component of a DNA chip for
monitoring gene expression, as a marker for a given chromosomal locus, or for
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