Appeal 2007-1148
Application 10/078,592
metalloprotease. The same applies to Appellants’ reliance on Quesada (Br.
6). We have already concluded that the characterization of SEQ ID NO:2 as
a metalloprotease, even if accurate, is insufficient to establish a patentable
utility for the claimed nucleic acids or the protein they encode.
Appellants also argue that the patentability of the claimed nucleic acids
is supported by Example 10 of the Revised Interim Utility Guideline Training
Materials (Br. 7). We disagree. That example shows that a high degree of
similarity to a protein with an established utility (e.g., a ligase enzyme) can
be sufficient to establish the likely activity of a claimed polypeptide or
nucleic acid. In this case, however, the characterization of SEQ ID NO:2 as a
“protease” or even a “zinc-dependent metalloprotease” does not suggest any
specific and substantial utility to those skilled in the art.
Finally, Appellants argue that the claimed nucleic acids are useful for
“tracking [the] expression of the presently claimed sequence” (Br. 8), for
identifying protein coding sequences of the genome (id. at 11), and for
mapping human chromosomes (id. at 12).
These uses do not meet the requirements of § 101. The Fisher court
concluded that generic uses like those asserted by Appellants – assessing
gene expression, mapping chromosomes, and identifying exons – are neither
substantial nor specific. Like in Fisher, these uses are “merely hypothetical
possibilities, objectives which the claimed [cDNAs], or any [cDNA] for that
matter, could possibly achieve, but none for which they have been used in
the real world.” Fisher, 421 F.3d at 1373, 76 USPQ2d at 1231 (emphasis in
original). Therefore, they are not substantial utilities.
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