Appeal No. 2005-0731 Page 20
Application No. 09/974,712
148 USPQ at 695. The Brenner Court held that the grant of patent rights to an applicant
is justified only by disclosure of an invention with substantial utility – a specific benefit in
currently available form. Until the invention has been refined and developed to this
point, the Court held, the applicant has not met his side of the bargain, and has not
provided a disclosure that justifies granting him the right to exclude others. See id.
Thus, the basic quid pro quo of the patent system is the grant of a valuable legal
right in exchange for a meaningful disclosure of the claimed invention. In this case, the
generic utilities disclosed for the claimed products do not entitle Appellants to the legal
right they claim to exclude others from using those products.
We note that this application is one of several on appeal that share the same
assignee.4 In each of these cases, regardless of the specific facts of the case, the
Appellants have asserted the same DNA chip, gene-mapping, and exon splice junction
arguments. Apparently, Appellants view these potential uses as utilities that can be
asserted for any cDNA they isolate, regardless of how little is known about it, which
(they hope) will nonetheless serve as a basis for patent protection and secure for
Appellants any value that might become apparent in the future, after they or others have
further characterized the claimed products. This is precisely the type of result that the
Brenner Court sought to avoid by requiring disclosure of a substantial utility to satisfy
§ 101. See 148 U.S. at 535-36, 148 USPQ at 696: [The Court was not] “blind to the
prospect that what now seems without ‘use’ may tomorrow command the grateful
4 Such applications include 09/460,594 (Appeal No. 2003-1528), 09/804,969 (2003-1794); 09/802,116
(2003-2017); 09/822,807 (2003-2028); and 09/564,557 (2004-0343).
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