Appeal No. 2005-2121 Page 6
Application No. 09/745,605
page 14). The examiner concludes that “[s]ignificant further research would have to be
conducted to identify such a nexus” (id.). In other words, the examiner finds that the
claimed invention does not provide a well-defined, particular benefit to the public.
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. As the examiner has pointed out, the specification provides
no guidance on the meaning of an increase or decrease in APEX-1 expression or activity,
other than a hypothetical association with inflammation, cancer and/or immune disorders.
Thus, we agree with the examiner that the specification fails to disclose a substantial
utility that satisfies the requirements of 35 U.S.C. § 101.
To the extent appellants argue that “credible utility is established at the very least
by the use of the claimed compounds as molecular weight markers,” (Brief, page 8) we
disagree. A utility that could be asserted for any expressed human gene is not a
“specific” utility that will satisfy § 101. See Fisher, 421 F.3d at 1370, 76 USPQ2d at 1230
(a specific utility requires “that [the] claimed invention can be used to provide a well-
defined and particular benefit to the public”) and id. at 1374, 76 USPQ2d at 1232 (“Any
EST transcribed from any gene in the maize genome has the potential to perform any one
of the alleged uses . . . Nothing about Fisher’s seven alleged uses set the five claimed
ESTs apart from the more than 32,000 ESTs disclosed in the ‘643 application or indeed
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”).
Any expressed human gene could be used as a molecular weight marker – just
as any expressed gene “can be used to map the location of [its] corresponding gene[ ]
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