Appeal No. 2003-2017 Page 23
Application No. 09/802,116
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
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
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