Appeal No. 2004-1040 Page 17
Application No. 09/770,643
Thus, the cited passage makes no reference to the specific polymorphism in
SEQ ID NO:1 or to forensic analysis. It therefore does not support the utility asserted in
the Appeal Brief. Appellants have cited no other evidence of record to show that such a
use was well-established as of the effective filing date of the present application
(January 26, 2000). Nor have Appellants provided any evidence to show that those
skilled in the art would have found the specific polymorphism present in SEQ ID NO:1 –
without analysis of its degree of variability in the human population and without
associating it with any other genetic marker – to be useful as argued. Thus, the
polymorphism-based utility asserted in the Appeal Brief lacks evidentiary support and
cannot be relied on to overcome the rejection.
In addition to the polymorphism-based argument, Appellants also argue that the
claimed nucleic acids are useful in “gene chip” methods of tracking gene expression.
See the Appeal Brief, pages 15-16:
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 sequences, must in
themselves be useful.
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.” Id., page 16.
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.
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