Appeal No. 2005-0102 Page 8
Application No. 09/840,787
from any EST derived from any organism. Accordingly, we conclude that Fisher has only
disclosed general uses for its claimed ESTs, not specific ones that satisfy § 101”).
As Appellants themselves have asserted, any expressed human gene could be
used to carry out expression profiling. Therefore, that potential use is not specific to the
claimed polynucleotides and does not meet the requirements of § 101.
In view of the disclosure of the instant case, that potential use is also not
substantial. As the examiner has pointed out, the specification provides no guidance on
the meaning of a change in HRM-19 expression. A substantial utility is one that makes
the invention useful to the public in its current form, not potentially useful in the future
after further research. See Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230. Since the
specification does not provide a disclosure that would allow those skilled in the art to use
the information that results from an expression profiling experiment in any practical way,
expression profiling of HRM-19 is not a substantial utility that would satisfy § 101.
Appellants also assert that HRM-19 is useful because it is likely to be a
mitochondrial carrier protein. See the Appeal Brief, page 15: “[T]he polypeptide encoded
for by the claimed polynucleotide shares more than 35% amino acid sequence identity
over 351 amino acid residues with C. elegans C16C10 (g577542) . . . , a putative
mitochondrial carrier protein. . . . This is more than enough homology to demonstrate a
reasonable probability that the utility of the mitochondrial carrier protein family can be
imputed to the claimed invention (through the polypeptide it encodes).”
We do not find this argument persuasive, because nowhere in the specification or
the Appeal Brief do Appellants explain what “utility” is possessed by members of “the
mitochondrial carrier protein family” and thereby imputed to HRM-19. Appellants assert
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