Appeal No. 2006-2131 Page 5
Application No. 10/309,422
indicating the claimed nucleic acid sequences are expressed at altered levels or forms
in any specific, diseased tissue, as compared with the healthy control tissue.”
Examiner’s Answer, pages 3-4. The examiner considered the disclosed uses that do
not depend on the specific properties of the encoded protein (e.g., for chromosome
mapping or as hybridization probes) but concluded that those uses are not substantial
or specific. Id., page 4. Finally, the examiner found that the evidence of record does
not show that the claimed nucleic acids have a nonasserted, well-established utility. Id.,
pages 5-6.
The examiner’s reasoning is consistent with the Fisher court’s interpretation of
35 U.S.C. § 101. We agree with the examiner’s reasoning and his conclusion that the
instant specification does not disclose a utility for the claimed nucleic acids that meets
the requirements of § 101.
Appellants argue that they have provided evidence to support the specification’s
statements that the polypeptides encoded by the claimed nucleic acids “are similar to
‘tumor-associated proteins’ (the specification at page 15, line 32), and that diseases
associated with the presently claimed sequences include ‘cancer’ (the specification at
page 16, line 21).” Appeal Brief, page 12. Appellants rely on comparisons of the amino
acid sequence encoded by SEQ ID NO:27 with two sequences from GenBank, and two
references that allegedly “confirm[ ] Appellants’ assertion that the presently claimed
sequences are involved in proliferation.” Id., pages 12-13.
We do not agree that the evidence of record shows that those skilled in the art
would have recognized a specific and substantial utility for the claimed nucleic acids as
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