Appeal No. 2003-2017 Page 15
Application No. 09/802,116
We do not agree with Appellants that the characterization of the protein
encoded by the claimed polynucleotides as a “new” kinase-interacting protein is
sufficient to establish patentable utility. Appellants’ specification discloses that the
claimed polynucleotides encode a protein that “shares structural similarity with
animal (DNA-dependent) protein kinase interacting proteins.” No further
information is provided regarding the activity or function of the protein encoded by
the claimed polynucleotides, the function of the proteins with which it “shares
structural similarity”, the kinase(s) with which any of these proteins interact, or the
nature of that interaction.
As the examiner pointed out, the evidence of record shows that kinases
have widely varying activities in vivo. See, e.g., the instant specification, which
admits that “kinases are involved in a wide range of regulatory pathways and
processes.” Page 1. The specification provides no basis for concluding which of
the “wide range of regulatory pathways and processes” involve kinases that
interact with the putative kinase-interacting protein of SEQ ID NO:2, or how the
protein of SEQ ID NO:2 affects the kinase(s) with which it interacts.
Thus, the evidence of record does not support Appellants’ position that the
identification of SEQ ID NO:2 as a kinase-interacting protein, without more,
provides a substantial utility for the claimed invention. In the terms used by the
Brenner Court, such a characterization does not provide a specific utility in
currently available form. We therefore reject Appellants’ argument that § 101 is
satisfied by SEQ ID NO:2’s “structural similarity” to known kinase-interacting
proteins.
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