Appeal No. 2003-1794 Page 21
Application No. 09/804,969
the grant of a valuable legal right in exchange for a meaningful disclosure of the
claimed invention. The generic utilities disclosed for the claimed products in this
case do not entitle Appellants to the legal right they claim.
We note that this application is one of several on appeal that share the
same assignee.4 In each of these cases, regardless of the specific facts of the
case, the appellants have argued that the claimed polynucleotide can be used in
DNA chips. It would therefore appear that Appellants are using the asserted
DNA chip utility as a stalking horse, to provide a utility that can be asserted for
any cDNA they isolate, regardless of how little is known about it, which (they
hope) will nonetheless serve as a basis for patent protection of all related
products and methods and secure for Appellants any value that might become
apparent in the future, after they or others have further characterized the claimed
products. This is precisely the type of result that the Brenner Court sought to
avoid by requiring disclosure of a substantial utility to satisfy § 101. See 148
U.S. at 535-36, 148 USPQ at 696: [The Court was not] “blind to the prospect that
what now seems without ‘use’ may tomorrow command the grateful attention of
the public. But a patent is not a hunting license. It is not a reward for the search,
but compensation for its successful conclusion.” Id.
The polynucleotides of the instant claims may indeed prove to be useful
(and valuable), after the in vivo role of the encoded protein is discovered. The
work required to confer value on the claimed products, however, remains to be
4 The applications referred to are: 09/460,594 (Appeal No. 2003-1528), 09/804,969 (2003-1794);
09/802,116 (2003-2017); 09/822,807 (2003-2028); and 09/564,557 (2004-0343).
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