Appeal No. 2006-2131 Page 9
Application No. 10/309,422
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 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 polymorphism in SEQ ID NOs 16 and 28
makes the claimed nucleic acids useful in “forensic analysis.” Appeal Brief, pages 4-11.
We do not agree that the difference between SEQ ID NOs 16 and 28, even if
accurately characterized as a 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
distinguishing SEQ ID NOs 7 and 8 (page 15, line 33 to page 16, line 6) 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.
Appellants argue that “diagnostic tests, such as forensic analysis, [were]
described in the specification as originally filed, at least page 10, line 31.” Appeal Brief,
page 4.
We do not agree that the cited passage supports Appellants’ argument. Line 31
of page 10 of the specification reads as follows: “designing diagnostic tests. For
example, sequences derived from”. The passage preceding line 31 reads as follows:
Alternatively, suitably labeled NHP nucleotide probes can be used to
screen a human genomic library using appropriately stringent conditions
or PCR. The identification and characterization of human genomic clones
is helpful for identifying polymorphisms (including, but not limited to,
nucleotide repeats, microsatellite alleles, single nucleotide polymorphisms,
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