Appeal No. 2005-0731 Page 16
Application No. 09/974,712
In addition to the polymorphism-based argument, Appellants also argue that the
claimed nucleic acids are useful in “gene chip” methods of tracking gene expression.
See the Appeal Brief, pages 19-20:
Such “DNA chips” clearly have utility, as evidenced by hundreds of issued
U.S. Patents. . . . Clearly, compositions that enhance the utility of such
DNA gene chips, such as the presently claimed sequences encoding a
voltage gated ion channel protein (KCNA7) associated with human heart
disease, must in themselves be useful.
Appellants argue that, in addition to their use in “DNA chips”, the claimed
sequence “provides exquisite specificity in localizing the specific region of the human
chromosome containing the gene encoding [sic, comprising?] the given polynucleotide.”
Page 21. Appellants argue that
[t]he presently claimed polynucleotide sequence provides biologically
validated empirical data (e.g., showing which sequences are transcribed,
spliced, and polyadenylated) that specifically define that portion of the
corresponding genomic locus that actually encodes exon sequence.
Pages 21-22. Appellants argue that “the practical scientific value of expressed, spliced,
and polyadenylated mRNA sequences is readily apparent to those skilled in the relevant
biological and biochemical arts.” Page 22.
We are not persuaded by Appellants’ argument. We find that the 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 and
intron regions 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
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