Appeal No. 2004-1040 Page 16
Application No. 09/770,643
Appellants also argue that the claimed polynucleotides are useful because of the
disclosed polymorphism at position 812 of SEQ ID NO:1: “As polymorphisms such as
this are the basis for forensic analysis, which is undoubtedly a ‘real world’ utility, the
presently claimed sequences must in themselves be useful.” Appeal Brief, page 11.
“The fact that forensic biologists use polymorphic markers such as that described by
Appellants every day provides more tha[n] ample support for the assertion that forensic
biologists would also be able to use the specific polymorphic marker described by
Appellants in the same fashion.” Id., page 13. The lack of information regarding
biological function is irrelevant to this utility, Appellants argues, because “[f]orensic
analysis requires no information regarding the function of the protein encoded by the
polymorphic DNA sequence.” Id., pages12-13.
This argument is not persuasive because, among other things, it has no support
in the specification or in the evidence of record. The specification discloses the
presence of a polymorphism in SEQ ID NO:1 (page 14) but discloses no utilities based
on detection of the polymorphism. In particular, the specification does not disclose that
the polymorphism is a useful marker for forensic analysis.
Appellants cite the specification at page 10, lines 15-19, as disclosing that “the
present nucleic acids sequences have utility in forensic analysis.” Appeal Brief, page
11. We do not agree that this passage supports Appellants’ argument. The sentence
cited by Appellants reads as follows:
The identification and characterization of human genomic clones is helpful
for identifying polymorphisms (including, but not limited to, nucleotide
repeats, microsatellite alleles, single nucleotide polymorphisms, or coding
single nucleotide polymorphisms), determining the genomic structure of a
given locus/allele, and designing diagnostic tests.
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