Appeal No. 2004-1761 Page 17
Application No. 10/044,807
value of expressed, spliced, and polyadenylated mRNA sequences is readily apparent
to those skilled in the relevant biological and biochemical arts.” Id., page 10.
We are not persuaded by Appellants’ argument. We find that these asserted
uses of the claimed polynucleotides—as a component of a DNA chip for monitoring
gene expression, as a marker for a given chromosomal locus, or for defining the exon
splice-junctions of a gene—do not satisfy the utility requirement of § 101. Such uses do
not provide a specific benefit in currently available form.
For example, with regard to the asserted “DNA chip” utility, we accept for
argument’s sake that a person skilled in the art could attach one of the claimed
polynucleotides (or a part of it) to a solid substrate, in combination with other
polynucleotides, to form a DNA chip, and that such a DNA chip could be used to
monitor changes in expression of the corresponding gene. However, the specification
provides no guidance to allow a skilled artisan to use data relating to the expression of
the gene comprising SEQ ID NO:1 in any practical way. The specification provides no
guidance regarding what the SEQ ID NO:1-specific information derived from a DNA chip
would mean.
For example, assume that a fragment of SEQ ID NO:1 was attached to a DNA
chip and the researcher observed that expression of the corresponding gene was
increased when a cell was treated with a particular agent. The specification provides no
basis on which a skilled worker would be able to determine what, if anything, that result
means. Or maybe a change in expression of the gene would mean different things,
depending on other factors, but again the specification provides no hint what other
factors might be important. Would it depend on what agent is used, what cell type is
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007