Appeal No. 2003-2017 Page 20
Application No. 09/802,116
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
necessarily mean that every one of the components of the DNA chip also has
patentable utility. A patentable utility divided by a thousand does not necessarily
equal a thousand patentable utilities. Each claimed invention must be shown to
meet § 101’s utility requirement in order to be patentable; it must provide a
specific benefit in currently available form. Providing a single data point among
thousands or millions, even if the thousands or millions of data points collectively
are useful, does not meet this standard.
The Supreme Court noted that the patent system contemplates a basic
quid pro quo: in exchange for the legal right to exclude others from his invention
for a period of time, an inventor discloses his invention to the public. See
Brenner, 383 U.S. at 534, 148 USPQ at 695. The Brenner Court held that the
grant of patent rights to an applicant is justified only by disclosure of an invention
with substantial utility – a specific benefit in currently available form. Until the
invention has been refined and developed to this point, the Court held, the
applicant has not met his side of the bargain, and has not provided a disclosure
that justifies granting him the right to exclude others. See id.
In this case, Appellants seek the right to exclude others from using any
polynucleotide encoding the sequence of SEQ ID NO:2. In return, Appellants
contend that they need not disclose the biological role or activity of the encoded
protein. See the Appeal Brief, pages 4-5 (“[K]nowledge of one or more particular
kinase[s] with which the presently claimed sequence interacts is not required to
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