Appeal No. 2006-2131 Page 10
Application No. 10/309,422
or coding single nucleotide polymorphisms), determining the genomic
structure of a given locus/allele, and designing diagnostic tests.
Page 10, lines 23-31.
Thus, the cited passage states that labeled probes derived from, for example,
nucleic acids encoding SEQ ID NO:16 or SEQ ID NO:28 “can be used to screen a
human genomic library” and that “characterization of human genomic clones is helpful
for . . . designing diagnostic tests.” This disclosure does not reasonably appear to refer
to forensic analysis based on the difference between SEQ ID NOs 16 and 28, and
Appellants have not adequately explained why a person skilled in the art would have
interpreted it that way.
In addition to lacking support in the specification, the polymorphism-based utility
is neither substantial nor specific. It is not substantial because it is merely a
hypothetical possibility, an objective which the disclosed polymorphisms, or any
polymorphism for that matter, could achieve, but not one for which the claimed nucleic
acids have been used in the real world. See Fisher, 421 F.3d at 1373, 76 USPQ2d at
1231. It is not specific because nothing about the asserted utility sets apart the
polymorphism in the claimed nucleic acids from any other polymorphism found in the
human genome. See id. at 1374, 76 USPQ2d at 1232.
Summary
The specification does not disclose a specific and substantial utility for the
claimed nucleic acids, as required by 35 U.S.C. § 101. We therefore affirm the
examiner’s rejection of claims 1, 3, and 6-11.
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