Appeal 2007-1148
Application 10/078,592
mere disclosure that a protein is a protease without a more
specific recitation of what type of protease (i.e., what substrate
is cleaved) is insufficient to provide a substantial utility, as the
skilled artisan would require further research to identify or
reasonably confirm a real world context of use.
(Answer 4-5.)
We agree with the Examiner’s reasoning. Section 101 requires a
utility that is both substantial and specific. In re Fisher, 421 F.3d 1365,
1371, 76 USPQ2d 1225, 1229 (Fed. Cir. 2005). A substantial utility is one
that “shows 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 th[e] 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.
The instant Specification discloses that the amino acid sequence of
SEQ ID NO:2 is similar to that of known proteases, including zinc-
dependent metalloproteases, but it discloses no specific and substantial
utility based on the expected protease activity. Nor does the Specification
disclose any specific and substantial utility for the protein of SEQ ID NO:2
or the DNA encoding it based on other properties they are expected to have.
The Specification contains only vague or generic assertions of utility. We
agree with the Examiner that the Specification does not “show that th[e]
claimed invention has a significant and presently available benefit to the
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013