Appeal No. 2005-0731 Page 18
Application No. 09/974,712
example, if SEQ ID NO:1 hybridizes to a specific part of human chromosome 19, or if
SEQ ID NO:1 can be used to show that the chromosomal gene has an exon splice
junction between nucleotides 103 and 104? The specification provides no guidance on
how such information would allow those skilled in the art to use the claimed
polynucleotides in a specific, substantial way. By contrast, if the specification disclosed,
for example, that SEQ ID NO:1 hybridized adjacent to a chromosomal locus associated
with a known disease (e.g., a locus susceptible to a cancer-causing translocation), the
sequence would have an apparent utility in disease diagnosis. However, without
disclosure of a specific use for the resulting data, using the claimed sequences for
mapping or determining exon splice-junctions amounts to research on the claimed
polynucleotides themselves.
In effect, Appellants’ position is that the claimed polynucleotides are useful
because those of skill in the art could experiment with them and figure out for
themselves what any observed experimental results might mean. We do not agree that
such a disclosure provides a “specific benefit in currently available form.” Rather, the
instant case seems analogous to Brenner. In Brenner, the applicant claimed a method
of making a compound but disclosed no utility for the compound. 383 U.S. at 529, 148
USPQ at 693. The Court held that a process lacks utility if it produces a product that
lacks utility. Id. at 534, 148 USPQ at 695. Here, Appellants claim a product asserted to
be useful in a method of generating gene-expression or gene-mapping data, but the
specification does not disclose how to interpret those data. Just as the process claimed
in Brenner lacked utility because the specification did not disclose how to use the end-
product, the product claims here lack utility, based on their use in, e.g., DNA chips,
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