Appeal No. 2006-0732 Page 8
Application No. 10/060,974
asserted utilities sets the claimed nucleic acids apart from any other human cDNA,
Appellants have “only disclosed general uses for [the] claimed [cDNAs], not specific
ones that satisfy § 101.” Id. at 1374, 76 USPQ2d at 1232.
Finally, Appellants argue that the identified polymorphism in SEQ ID NO:2 makes
the nucleic acids useful in “forensic analysis.” Appeal Brief, pages 7-9.
We do not agree that the disclosed polymorphism establishes the utility of the
claimed nucleic acids. First, Appellants’ argument lacks support in the specification or
in the evidence of record. The specification discloses the presence of a polymorphism
in SEQ ID NO:1 (page 17) but discloses no utilities based on detection of the
polymorphism. In particular, the specification does not disclose that the polymorphism
is a useful marker for forensic analysis.4
In addition, the polymorphism-based utility is neither substantial nor specific. It is
not substantial because it is merely a hypothetical possibility, an objective which the
disclosed polymorphisms, or any polymorphism for that matter, could achieve, but not
one for which the claimed nucleic acids have been used in the real world. See Fisher,
421 F.3d at 1373, 76 USPQ2d at 1231. It is not specific because nothing about the
asserted utility sets the polymorphism in SEQ ID NO:1 apart from any other
polymorphism found in the human genome. See id. at 1374, 76 USPQ2d at 1232.
4 The specification (page 3) states that the “sequences of the present invention are also useful as
additional DNA markers for restriction fragment length polymorphism (RFLP) analysis, and in forensic
biology.” This passage, however, does not refer to the usefulness of the polymorphism in SEQ ID NO:1
but only generically to the use of the “sequences of the present invention . . . in forensic biology.”
Appellants have provided no evidence to show that the cited passage would have been understood by
those skilled in the art to mean that the claimed sequences are useful because of the polymorphism
found therein.
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