Appeal No. 2004-1040 Page 21
Application No. 09/770,643
DNA chip contributes to the data generated by the DNA chip overall, the contribution of
a single polynucleotide—its data point—is only a tiny contribution to the overall picture.
The Brenner Court held that § 101 sets more than a de minimis standard for
utility. Therefore, the patentable utility of a DNA chip, for example, does not necessarily
mean that every one of the components of the DNA chip also has patentable utility. A
patentable utility divided by a thousand does not necessarily equal a thousand
patentable utilities. Each claimed invention must be shown to meet § 101’s utility
requirement in order to be patentable; it must provide a specific benefit in currently
available form. Providing a single data point among thousands, even if the thousands
of data points collectively are useful, does not meet this standard.
The Supreme Court noted that the patent system contemplates a basic quid pro
quo: in exchange for the legal right to exclude others from his invention for a period of
time, an inventor discloses his invention to the public. See Brenner, 383 U.S. at 534,
148 USPQ at 695. The Brenner Court held that the grant of patent rights to an applicant
is justified only by disclosure of an invention with substantial utility – a specific benefit in
currently available form. Until the invention has been refined and developed to this
point, the Court held, the applicant has not met his side of the bargain, and has not
provided a disclosure that justifies granting him the right to exclude others. See id.
Thus, the basic quid pro quo of the patent system is the grant of a valuable legal
right in exchange for a meaningful disclosure of the claimed invention. In this case, the
generic utilities disclosed for the claimed products do not entitle Appellants to the legal
right they claim to exclude others from using those products.
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