Appeal No. 2005-2207 Page 7
Application No. 09/548,933
The Fisher court held that none of Fisher’s seven asserted uses were specific
because “[a]ny EST transcribed from any gene in the maize genome has the potential to
perform any one of the alleged uses. . . . Nothing about [the] seven alleged uses set[s]
the five claimed ESTs apart from the more than 32,000 ESTs disclosed in the [ ]
application or indeed from any EST derived from any organism.” Id. at 1374, 76 USPQ2d
at 1232. Accordingly, the court concluded that Fisher “only disclosed general uses for its
claimed ESTs, not specific ones that satisfy § 101.” Id.
Furthermore, the Fisher court held that none of the uses asserted by the
applicant in that case were substantial because “all of [the] asserted uses represent
merely hypothetical possibilities, objectives which the claimed ESTs, or any EST for that
matter, could possibly achieve, but none for which they have been used in the real
world.” Id. at 1373, 76 USPQ2d at 1231. The court concluded that the claimed ESTs
lacked “a ‘substantial’ utility under § 101” “because Fisher failed to prove that its
claimed ESTs [could] be successfully used in the seven ways disclosed in the [ ]
application” (id. at 1374, 76 USPQ2d at 1232).
The present specification discloses that hHAC3, expressed at high levels in the
brain, and moderate levels in the heart, is a member of the HAC family of
hyperpolarization-activated, cyclic nucleotide-gated channels, and generates a mixed
sodium/potassium Ih current associated with pacemaker activity when functionally
expressed in oocytes. Specification, page 63. In addition, the specification discloses that
activators and inhibitors of hHAC3 channels are useful as pharmaceutical agents for
treating various pacemaker dysfunctions, e.g., cardiac arrhythmias, as well as disorders
involving abnormal ion flux, e.g., migraines and seizures. Id., pages 9 and 12.
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