Appeal No. 2005-0731 Page 19
Application No. 09/974,712
because the specification does not disclose how to use the SEQ ID NO:1-specific gene
expression data generated by a DNA chip.
Appellants argue that the claimed polynucleotides could potentially be part of a
DNA chip; since DNA chips have utility, compounds that “enhance the utility of such
DNA chips, such as the presently claimed nucleotide sequence, must in themselves be
useful.” Appeal Brief, page 11. We disagree.
Assuming arguendo that a generic DNA chip—one comprising a collection of
uncharacterized or semi-characterized gene fragments—would provide a useful tool for,
e.g., drug discovery, it does not follow that each one of the polynucleotides represented
in the DNA chip individually has patentable utility. Although each polynucleotide in the
DNA chip contributes to the data generated by the DNA chip overall, the contribution of
a single polynucleotide—its data point—is only a tiny contribution to the overall picture.
The Brenner Court held that § 101 sets more than a de minimis standard for
utility. Therefore, the patentable utility of a DNA chip, for example, does not necessarily
mean that every one of the components of the DNA chip also has patentable utility. A
patentable utility divided by a thousand does not necessarily equal a thousand
patentable utilities. Each claimed invention must be shown to meet § 101’s utility
requirement in order to be patentable; it must provide a specific benefit in currently
available form. Providing a single data point among thousands, even if the thousands
of data points collectively are useful, does not meet this standard.
The Supreme Court noted that the patent system contemplates a basic quid pro
quo: in exchange for the legal right to exclude others from his invention for a period of
time, an inventor discloses his invention to the public. See Brenner, 383 U.S. at 534,
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