Appeal 2007-1148
Application 10/078,592
public” and “provide[s] a well-defined and particular benefit to the public.”
See Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230. Therefore, the
Specification does not disclose a specific and substantial utility for the
claimed invention, as required by § 101.
Appellants argue that the amino acid sequence of SEQ ID NO:2
“shares nearly 100% identity over an extended length” with the amino acid
sequence disclosed and claimed in the Beasley patents, including the
putative metalloprotease domain (Br. 4). Appellants argue that “[a]s the
United States Patent and Trademark Office has clearly established that the
sequence claimed in U.S. Patent Nos. 6,461,850 and 6, 638,751 has a
patentable utility, there can be no question that Appellants’ sequence . . .
must also have a patentable utility” (id.)
We disagree. The issue is not whether the protein of SEQ ID NO:2,
or a nucleic acid encoding it, “ha[s] a patentable utility” in some
metaphysical sense; the issue is whether the instant Specification discloses a
utility adequate to support § 101. The fact that Beasley’s disclosure was
found to support patentability is irrelevant.
In addition, the Beasley patents issued after the effective filing date of
this application. While post-filing evidence can be relied on to show the
accuracy of a statement in the Specification, it cannot be used to supplement
the Specification’s disclosure. See In re Hogan, 559 F.2d 595, 605, 194
USPQ 527, 537 (CCPA 1977) (“[U]se of later publications as evidence of
the state of art existing on the filing date of an application” is acceptable).
Thus, the Beasley patents can be relied on only to confirm the
Specification’s statement that SEQ ID NO:2 is a zinc-dependent
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