Appeal No. 2004-1040 Page 23
Application No. 09/770,643
metes and bounds of that monopoly are not capable of precise delineation. It may
engross a vast, unknown, and perhaps unknowable area. Such a patent may confer
power to block off whole areas of scientific development.” We consider the Brenner
Court’s concern about the “power to block off whole areas of scientific development” to
be equally applicable here.
Finally, adopting the per se rule that Appellants seek—that any expressed
human gene has utility because it can be used in a DNA chip—would mean that almost
any naturally occurring nucleic acid would be patentable. Appellants’ reasoning does
not depend on the biological function of the protein encoded by the claimed nucleic
acids, and so would apparently apply to any expressed human gene, as well as
fragments of them (see, e.g., the specification at page 6, lines 3-12).
Nor can the rationale be confined to expressed human genes. We can take
judicial notice of the fact that other organisms are of interest for many different reasons,
such that gene expression assays could conceivably be used in their research. For
example, some organisms are of interest to researchers because they have been
historically well-studied (e.g., yeast and Arabidopsis). Others are of interest because
they are used as animal models (e.g., mice and chimpanzees), because they are
commercially valuable (e.g., pigs and tomatoes), because they are pests (e.g., ragweed
and corn borers), or because they are pathogens (e.g., Candida and various bacteria).
Under Appellants’ proposed rule, hybridizable fragment of any gene of any of these
organisms—and probably most other organisms—would be found to have patentable
utility because it could be attached to a chip and used in “research” to see what
happens to expression of that gene under various conditions.
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