Appeal No. 2003-1794 Page 18
Application No. 09/804,969
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:14 hybridizes to a specific part of human
chromosome 3, or that SEQ ID NO:14 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:14 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
agree that such a disclosure provides a “specific benefit in currently available
form.” Rather, the instant case seems analogous to Brenner. In Brenner, the
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