Appeal No. 2006-1035 Page 7
Application No. 09/925,140
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.” Id.
In this case, Appellants argue that those skilled in the art could have used
polynucleotides encoding inactive SDHH variants in hybridization assays to detect and
quantitate gene expression, to detect related sequences or polymorphisms, or to carry
out expression profiling in connection with toxicology testing. Appeal Brief, pages 5-8.
We do not agree that using the claimed polynucleotides to detect related
sequences or to monitor expression of the corresponding gene constitutes a specific
and substantial utility, as defined by the Fisher court. Like the generic utilities asserted
in Fisher, Appellants’ asserted uses are neither substantial nor specific. Appellants
have not disclosed how the results of the asserted hybridization assays would provide a
real-world benefit. Thus, just as in Fisher, these uses are “merely hypothetical
possibilities, objectives which the claimed [cDNAs], or any [cDNA] for that matter, could
possibly achieve, but none for which they have been used in the real world.” Fisher,
421 F.3d at 1373, 76 USPQ2d at 1231 (emphasis in original). Therefore, they are not
substantial utilities.
Nor are they specific utilities, because they could be asserted for any cDNA
transcribed from any gene in the human genome. Because nothing about Appellants’
asserted utilities sets the claimed polynucleotides 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.
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