Appeal No. 2004-1761 Page 14
Application No. 10/044,807
forensic analysis, which i[s] undoubtedly a ‘real world’ utility, the presently claimed
sequence must in itself be useful.” Appeal Brief, page 4. “The fact that forensic
biologists use polymorphic markers such as those described by Appellants every day
provides more than ample support for the assertion that forensic biologists would also
be able to use the specific polymorphic markers described by Appellants in the same
fashion.” Id., page 5.
This argument is not persuasive. As their basis for asserting that the disclosed
polymorphisms provide utility for the claimed polynucleotides, Appellants cite to “the
specification as originally filed, at least page 3, line 15, and from page 11, line 31 to
page 12, line 27.” Appeal Brief, page 4. We do not find support for the asserted utility
in the cited passages.
The sentence on page 3 that includes line 15 reads as follows: “The sequences
of the present invention are also useful as additional DNA markers for restriction
fragment length polymorphism (RFLP) analysis, and in forensic biology.” Page 11, line
31, to page 12, line 27 reads as follows:
The identification and characterization of human genomic clones is helpful
for identifying polymorphisms (including but not limited to, nucleotide
repeats, microsatellite alleles, single nucleotide polymorphisms, or coding
single nucleotide polymorphisms), determining the genomic structure of a
given locus/allele, and designing diagnostic tests. For example,
sequences derived from regions adjacent to the intron/exon boundaries of
the human gene can be used to design primers for use in amplification
assays to detect mutations within the exons, introns, splice sites (e.g.,
splice acceptor and/or donor sites), etc., that can be used in diagnostic
and pharmacogenomics.
For example, the present sequences can be used in restriction fragment
length polymorphism (RFLP) analysis to identify specific individuals. In
this technique, an individual’s genomic DNA is digested with one or more
restriction enzymes, and probed on a Southern blot to yield unique bands
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