Appeal No. 2006-3253 Page 6
Application No. 10/276,547
§ 101 requires a utility that is both substantial and specific. Id. at 1371, 76 USPQ2d at
1229.
The court held that disclosing a substantial utility means “show[ing] that an
invention is useful to the public as disclosed in its current form, not that it may be useful
at some future date after further research. Simply put, to satisfy the ‘substantial’ utility
requirement, an asserted use must show that that claimed invention has a significant
and presently available benefit to the public.” Id., 76 USPQ2d at 1230. A specific utility
is “a use which is not so vague as to be meaningless.” Id. In other words, “in addition
to providing a ‘substantial’ utility, an asserted use must show that th[e] claimed invention
can be used to provide a well-defined and particular benefit to the public.” Id.
In this case, the specification lays out a laundry list of conditions that might
involve the polypeptide of SEQ ID NO:2. The specification provides no guidance,
however, that would lead the skilled artisan to conclude that SEQ ID NO:2 is likely to be
involved with any particular one of the disclosed conditions. The specification provides
little evidence linking the activity of the protein of SEQ ID NO:2 with any of the listed
conditions. Thus, the specification provides inadequate evidence to show that a
compound that binds the protein of SEQ ID NO:2 would be useful in treating any of the
listed conditions.
Those skilled in the art would conclude that the specification does not disclose a
substantial utility for the claimed method; i.e., an invention that is useful to the public in
its current form, rather than potentially useful in the future after further research. See
Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230. We agree with the examiner that the
specification does not disclose a substantial, credible utility for the claimed method.
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