Appeal No. 2005-0792 Page 12
Application No. 09/750,373
By contrast, Brenner’s standard has been interpreted to mean that “vague,
general disclosures or arguments of ‘useful in research’ or ‘useful as building
blocks of value to the researcher’” would not satisfy § 101. See Kirk, 376 F.2d at
945, 153 USPQ at 55 (interpreting Brenner). Likewise, a disclosure of a “plastic-
like” polypropylene capable of being pressed into a flexible film was held to show
that the applicant was “at best . . . on the way to discovering a practical utility for
polypropylene at the time of the filing,” but not yet there. Ziegler, 992 F.2d at
1203, 26 USPQ2d at 1605.
On this record, the examiner finds (Answer, page 3), “[t]he claimed
receptor is what is termed an ‘orphan receptor’ in the art. The instant application
does not disclose the biological role of the claimed protein or its significance.”
According to the examiner (Answer, page 4), while appellants disclose that the
claimed polynucleotide encodes a protein believed to be a GPCR, “no
comparison to any known GPCR could be found in the specification.” In this
regard, the examiner finds (Answer, page 6), “[t]he specification does not
characterize the polypeptide encoded by the polynucleotide of the claimed
invention. Therefore binding sites, etc. are not identified. Significant further
experimentation would be required of the skilled artisan to characterize the
protein and search for ligands.” Accordingly, the examiner concludes (Answer,
page 5),
the specification fails to teach the skilled artisan the utility of the
claimed polynucleotide of SEQ ID NO:12 … which [is] only believed
to … [encode a] GPCR[ ]. Therefore, the instant claim[ is] drawn to
a polynucleotide encoding a protein which has a yet undetermined
function or biological significance. There is no actual and specific
significance which can be attributed to said protein identified in the
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