Appeal No. 2004-1040 Page 18
Application No. 09/770,643
Id., page 17. Appellants argue that “the practical scientific value of expressed, spliced,
and polyadenylated mRNA sequences is readily apparent to those skilled in the relevant
biological and biochemical arts.” Id. Finally, Appellants argue that “the present
nucleotide sequence has a specific utility in mapping the claimed sequence to the
corresponding human chromosome, specifically chromosome 2.” Id.
We are not persuaded by Appellants’ argument. We find that the asserted uses
of the claimed polynucleotides—as a component of a DNA chip for monitoring gene
expression, as a marker for a given chromosomal locus, or for defining the exon splice-
junctions of a gene—do not satisfy the utility requirement of § 101. Such uses do not
provide a specific benefit in currently available form.
For example, with regard to the asserted “DNA chip” utility, we accept for
argument’s sake that a person skilled in the art could attach one of the claimed
polynucleotides (or a part of it) to a solid substrate, in combination with other
polynucleotides, to form a DNA chip, and that such a DNA chip could be used to
monitor changes in expression of the corresponding gene. However, the specification
provides no guidance to allow a skilled artisan to use data relating to the expression of
the gene comprising SEQ ID NO:1 in any practical way. The specification provides no
guidance regarding what the SEQ ID NO:1-specific information derived from a DNA chip
would mean.
For example, assume that a fragment of SEQ ID NO:1 was attached to a DNA
chip and the researcher observed that expression of the corresponding gene was
increased when a cell was treated with a particular agent. The specification provides no
basis on which a skilled worker would be able to determine what, if anything, that result
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