Appeal No. 2005-0102 Page 10
Application No. 09/840,787
amounts of transcript with cancer is further disclosed in the specification at, for example,
p. 48, lines 7-16, and p. 48, line 29 through p. 49, line 1.”
We agree with Appellants that overexpression of a particular DNA sequence in
lung cancer cells (compared to noncancerous cells) is a utility that could satisfy the
“specific and substantial” requirements of § 101. The problem here is that the
specification does not disclose that HRM-19, as opposed to HRM-1 through HRM-18 or
HRM-20 through HRM-49, is useful for diagnosing cancer of the lung, as opposed to any
of the thirty-three other types of cancer or thirty-three immune disorders that are listed on
pages 48-49 along with lung cancer.
Essentially, the specification discloses a set of forty-nine proteins, each of which is
asserted to be useful in diagnosing or treating a set of sixty-seven diseases. According to
Appellants, if any of these 3283 (49 x 67 = 3283) combinations turns out to be accurate,
that is sufficient to support a patent.
We do not agree. The disclosure in the instant specification lacks the specificity
required to say that it discloses, in the sense of § 112, first paragraph, that HRM-19 is
useful in diagnosing lung cancer. True, the specification discloses forty-nine HRM
proteins and sixty-seven different diseases; with hindsight, one can pick HRM-19 and
lung cancer from the relevant groups and say that that combination is disclosed, together
with 3282 others.
This kind of generic disclosure, however, has been held to be inadequate to
support a claim to one particular species that is encompassed by the genus. For
art existing on the filing date of an application” is acceptable). Appellants have not shown that Yu’s
disclosure is evidence of the state of the art as of Sept. 23, 1997; therefore, we have not considered it.
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