Appeal No. 2003-1794 Page 22
Application No. 09/804,969
done. The instant specification’s disclosure does not justify a grant of patent
rights. See Brenner, 383 U.S. at 534, 148 USPQ at 695: “[A] process patent in
the chemical field, which has not been developed and pointed to the degree of
specific utility, creates a monopoly of knowledge which should be granted only if
clearly commanded by the statute. Until the process claim has been reduced to
production of a product shown to be useful, the metes and bounds of that
monopoly are not capable of precise delineation. It may engross a vast,
unknown, and perhaps unknowable area. Such a patent may confer power to
block off whole areas of scientific development.” We consider the Brenner
Court’s concern about the “power to block off whole areas of scientific
development” to be equally applicable here.
Finally, in addition to being contrary to controlling case law, the per se rule
that Appellants seek—that any expressed human gene has utility because it can
be used in a DNA chip—would disserve the patent system. In the first place, it is
unclear what, if anything, limits Appellants’ proposed rule. Appellants have
asserted that this rationale would apply to polynucleotides that encode a
polypeptide with an unknown biological role. See the Appeal Brief, page 6. It is
also apparent that it applies not only to intact genes, but to fragments of them as
small as eight nucleotides long. See the specification, page 6, lines 32-36.
Nor can the rationale be confined to expressed human genes. We can
take judicial notice of the fact that other organisms are of interest for many
different reasons, such that gene expression assays could conceivably be used
in their research. For example, some organisms are of interest to researchers
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