Appeal No. 2006-1879 Page 10
Application No. 10/010,114
The Fisher court considered the applicant’s argument that an EST is a research
tool, like a microscope, but found the analogy inapt: “[A] microscope has the specific
benefit of optically magnifying an object to immediately reveal its structure. One of the
claimed ESTs, by contrast, can only be used to detect the presence of genetic material
having the same structure as the EST itself. It is unable to provide any information
about the overall structure let alone the function of the underlying gene.” Id. at 1373, 76
USPQ2d 1231. The court concluded that “Fisher’s asserted uses are insufficient to
meet the standard for a ‘substantial’ utility under § 101.” Id. at 1373, 76 USPQ2d 1231.
The ESTs at issue in Fisher lacked substantial utility because they were useful
only for conducting experiments on the genes of which the ESTs were part; they were
not useful for conducting research generally but only for conducting research to learn
more about the ESTs themselves and the genes from which they were derived. Here,
by contrast, the claimed method is broadly useful for transferring nucleic acids into cells.
The instant claims are directed to a completed invention, not a “research intermediate”
as in Fisher, that can be used to carry out research using a variety of nucleic acids,
cells, and subjects. Thus, the instantly claimed method is a valid research tool that can
be used to carry out research in general rather than research limited to discovering
information about the claimed invention itself.
Summary
We do not agree with the examiner that enabling the instant claims requires
enabling therapeutically effective gene therapy. The specification provides adequate
guidance to enable those skilled in the art to use the claimed method to transfer nucleic
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