Appeal No. 2004-1040 Page 20
Application No. 09/770,643
In effect, Appellants’ position is that the claimed polynucleotides are useful
because those of skill in the art could experiment with them and figure out for
themselves what any observed experimental results might mean. We do not agree that
such a disclosure provides a “specific benefit in currently available form.” Rather, the
instant case seems analogous to Brenner. In Brenner, the applicant claimed a method
of making a compound but disclosed no utility for the compound. 383 U.S. at 529, 148
USPQ at 693. The Court held that a process lacks utility if it produces a product that
lacks utility. Id. at 534, 148 USPQ at 695. Here, Appellants claim a product asserted to
be useful in a method of generating gene-expression or gene-mapping data, but the
specification does not disclose how to interpret those data. Just as the process claimed
in Brenner lacked utility because the specification did not disclose how to use the end-
product, the product claims here lack utility, based on their use in, e.g., DNA chips,
because the specification does not disclose how to use the SEQ ID NO:1-specific gene
expression data generated by a DNA chip.
Appellants argue that the claimed polynucleotides could potentially be part of a
DNA chip; since DNA chips have utility, compounds that “enhance the utility of such
DNA chips, such as the presently claimed nucleotide sequence, must in themselves be
useful.” Appeal Brief, pages 15-16. We disagree.
Assuming arguendo that a generic DNA chip—one comprising a collection of
uncharacterized or semi-characterized gene fragments—would provide a useful tool for,
e.g., drug discovery, it does not follow that each one of the polynucleotides represented
in the DNA chip individually has patentable utility. Although each polynucleotide in the
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