Appeal No. 2003-1794 Page 23 Application No. 09/804,969 because they have been historically well-studied (e.g., yeast, Arabidopsis, C. elegans, Drosophila). Other organisms are of interest because they are used as animal models for testing pharmaceuticals (e.g., mice, chimpanzees, rhesus monkeys, rabbits), or because they are commercially valuable (e.g., pigs, cows, corn, rice, tomatoes), or because they are pests (e.g., fungi such as Fusarium, common weeds like ragweed, insects such as corn borers, nonnative invaders such as zebra mussels, etc.), or because they are pathogens (e.g., Candida, various bacteria, tapeworms, etc.). Under Appellants’ proposed rule, every eight base pair-long fragment of any gene of any of these organisms—and probably most other organisms—would be found to have patentable utility because it could be attached to a chip and used in “research” to see what happens to expression of that gene under various conditions. Appellants’ reasoning would also vitiate the enablement requirement, since “[t]he enablement requirement is met if the description enables any mode of making and using the invention.” Johns Hopkins Univ. v. CellPro Inc., 152 F.3d 1342, 1361, 47 USPQ2d 1705, 1714 (Fed. Cir. 1998) (quoting Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533, 20 USPQ2d 1300, 1304 (Fed. Cir. 1991)). If we were to agree with Appellants that any expressed gene and any eight base pair-long fragment thereof is useful in a DNA chip, then we would also have to hold that the specification has taught those skilled in the art one mode of using the invention. Thus, Appellants’ rule of per se utility would also require a corresponding rule of per se enablement.Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 NextLast modified: November 3, 2007