Appeal No. 2003-1794 Page 19
Application No. 09/804,969
applicant claimed a method of making a compound but disclosed no utility for the
compound. 383 U.S. at 529, 148 USPQ at 693. The Court held that a process
lacks utility if it produces a product that lacks utility. Id. at 534, 148 USPQ at 695.
Here, Appellants claim a product asserted to be useful in a method of generating
gene-expression or gene-mapping data, but the specification does not disclose
how to interpret those data. Just as the process claimed in Brenner lacked utility
because the specification did not disclose how to use the end-product, the
product claims here lack utility, based on their use in, e.g., DNA chips, because
the specification does not disclose how to use the phospholipase gene-specific
gene expression data generated by a DNA chip.
Appellants argue that the claimed polynucleotides could potentially be part
of a DNA chip; since DNA chips have utility, compounds that “enhance the utility
of such DNA chips, such as the presently claimed nucleotide sequence, must
also be useful.” Appeal Brief, pages 6-7 (emphasis in original). We disagree.
Assuming arguendo that a generic DNA chip—one comprising a collection
of uncharacterized or semi-characterized gene fragments—would provide a
useful tool for, e.g., drug discovery, it does not follow that each one of the
polynucleotides represented in the DNA chip individually has patentable utility.
Although each polynucleotide in the DNA chip contributes to the data generated
by the DNA chip overall, the contribution of a single polynucleotide—its data
point—is only a tiny contribution to the overall picture.
The Brenner Court held that § 101 sets more than a de minimis standard
for utility. Therefore, the patentable utility of a DNA chip, for example, does not
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