Appeal No. 2006-2131 Page 8
Application No. 10/309,422
in treating cancer, only that they may be targeted in order to augment the efficacy of
other (chemotherapeutic) agents used to treat cancer. Appellants have pointed to no
other disclosure in the specification that would indicate that the disclosure that a protein
is “similar to . . . tumor-associated proteins, and precursors of secreted proteins” would
allow those skilled in the art to use it in a specific and substantial utility.
We conclude that the specification’s characterization of the proteins encoded by
the claimed nucleic acids is insufficient to allow those skilled in the art to use the
proteins of SEQ ID NO:16 and SEQ ID NO:28 in a specific and substantial way. In
addition, the cited references do not show that those skilled in the art, at the time the
application was filed, would have recognized any specific and substantial utility for the
proteins of SEQ ID NOs 16 and 28.
Appellants also argue that the claimed polynucleotides are useful for “tracking
the expression of the gene encoding the described protein, for example using high-
throughput DNA chips” (Appeal Brief, page 16); that they are useful in mapping human
chromosomes (id., page 18); and that they are “useful for functionally defining exon
splice-junctions” (id., page 19).
We find that none of these uses meet the requirements of § 101. In this case, as
in Fisher, the generic uses asserted by Appellants – assessing gene expression, mapping
human chromosomes, and defining exon splice-junctions – are neither substantial nor
specific. Like 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.
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