Appeal No. 2003-2017 Page 16
Application No. 09/802,116
Appellants also argue that the claimed polynucleotides are useful because
they can be used for purposes that do not depend on the activity or function of
the encoded polypeptide. Appellants argue, for example, that
knowledge of one or more particular kinase[s] with which the
presently claimed sequence interacts is not required to track
expression patterns using a DNA chip. . . . [T]hose skilled in the art
would instantly recognize that the present nucleotide sequence
would be an ideal, novel candidate for assessing gene expression
using, for example, DNA chips. . . . Such “DNA chips” clearly have
utility, as evidenced by hundreds of issued U.S. Patents. . . .
Clearly, compositions that enhance the utility of such DNA chips,
such as the presently claimed nucleotide sequence, must also be
useful.
Appeal Brief, pages 4-5 (emphases in original).
Appellants argue that, in addition to their use in “DNA chips”, the claimed
sequences are also useful “in determining the genomic structure of the
corresponding human chromosome, for example mapping the protein encoding
regions,” and in “localizing the specific region of the human chromosome
containing the gene encoding the given polynucleotide [sic, polypeptide].” Id.,
page 8. More particularly, Appellants argue that
[t]he presently claimed polynucleotide sequence provides
biologically validated empirical data (e.g., showing which
sequences are transcribed, spliced, and polyadenylated) that
specifically define that portion of the corresponding genomic locus
that actually encodes exon sequence.
Id. Appellants argue that “the described sequences are useful for functionally
defining exon splice-junctions,” and that “the practical scientific value of
expressed, spliced, and polyadenylated mRNA sequences is readily apparent to
those skilled in the relevant biological and biochemical arts.” Id.
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