Appeal No. 2004-1040 Page 12
Application No. 09/770,643
than a related compound known to have antitumor activity (Brana, 51 F.3d at 1567, 34
USPQ2d at 1442).
By contrast, Brenner’s standard has been interpreted to mean that “vague,
general disclosures or arguments of ‘useful in research’ or ‘useful as building blocks of
value to the researcher’” would not satisfy § 101. See Kirk, 376 F.2d at 945, 153 USPQ
at 55 (interpreting Brenner). Likewise, a disclosure of a “plastic-like” polypropylene
capable of being pressed into a flexible film was held to show that the applicant was “at
best . . . on the way to discovering a practical utility for polypropylene at the time of the
filing,” but not yet there. Ziegler, 992 F.2d at 1203, 26 USPQ2d at 1605.
In this case, the examiner found the specification’s disclosure to be inadequate:
[T]he instant claims are drawn to a nucleic acid molecule which has a yet
undetermined function or biological significance, or correlation to a specific
disease state. . . . In the absence of a knowledge of the natural ligands or
biological significance of this protein, or any significance of the nucleic
acid molecule of the present invention, . . . there is no immediately
obvious patentable use for them. To employ the nucleic acid molecule of
the instant invention to treat [sic], to better understand disease, or to use it
to produce a receptor protein to identify substances which bind to and/or
mediate activity of the said receptor is clearly to use it as the object of
further research.
Examiner’s Answer, page 5.3 The examiner noted Appellants’ evidence that the
claimed polynucleotides encode a member of the neurexin superfamily or a contactin-
associated protein (caspr), but concluded that the evidence did not suggest a utility that
would satisfy § 101. See id., pages 6-7:
3 The examiner also criticized the specification’s reliance on sequence similarity as a basis for inferring
the function of the claimed NHP. See the Examiner’s Answer, pages 4-5. Appellants argue that
sequence comparisons are well-accepted, although perhaps not universally accepted, in the art as a
reasonable basis on which to predict function. See the Appeal Brief, pages 6-11. We need not decide the
issue because, even assuming Appellants are correct, the specification does not adequately disclose the
utility of the claimed nucleic acids.
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