Appeal No. 2004-1040 Page 22
Application No. 09/770,643
We note that this application is one of several on appeal that share the same
assignee.6 In each of these cases, regardless of the specific facts of the case, the
Appellants have asserted the same DNA chip, gene-mapping, and exon splice junction
arguments. Apparently, Appellants view these potential uses as utilities that can be
asserted for any cDNA they isolate, regardless of how little is known about it, which
(they hope) will nonetheless serve as a basis for patent protection and secure for
Appellants any value that might become apparent in the future, after they or others have
further characterized the claimed products. This is precisely the type of result that the
Brenner Court sought to avoid by requiring disclosure of a substantial utility to satisfy
§ 101. See 148 U.S. at 535-36, 148 USPQ at 696: [The Court was not] “blind to the
prospect that what now seems without ‘use’ may tomorrow command the grateful
attention of the public. But a patent is not a hunting license. It is not a reward for the
search, but compensation for its successful conclusion.” Id.
The polynucleotides of the instant claims may indeed prove to be useful (and
valuable), after the in vivo role of the encoded protein is discovered. The work required
to confer value on the claimed products, however, remains to be done. The instant
specification’s disclosure does not justify a grant of patent rights. See Brenner, 383
U.S. at 534, 148 USPQ at 695: “[A] process patent in the chemical field, which has not
been developed and pointed to the degree of specific utility, creates a monopoly of
knowledge which should be granted only if clearly commanded by the statute. Until the
process claim has been reduced to production of a product shown to be useful, the
6 Such applications include 09/460,594 (Appeal No. 2003-1528), 09/804,969 (2003-1794); 09/802,116
(2003-2017); 09/822,807 (2003-2028); and 09/564,557 (2004-0343).
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