Appeal 2004-1103
Application 09/733,387
detailed analysis of the Pb99-deficient mice will further elucidate the role of the
Pb99 protein in lymphocyte function and development . . .” Id. Thus, contrary to
appellants’ assertion, Sleckman does not functionally characterize Pb99 as a
G protein-coupled receptor; instead, Sleckman expressly states that further
research is necessary to elucidate the role of the Pb99 protein.
In addition, regarding Sleckman’s recognition (page 4409, second column)
that Pb99 has seven distinct hydrophobic domains, suggesting that it may span
the membrane seven times, we note that Ji teaches (page 17299, column 1),
“there are putative seven transmembrane molecules, which do not appear to be
coupled to a G protein.” Accordingly, we are not persuaded by appellants’
assertion that Sleckman functionally characterizes Pb99 as a
G protein-coupled receptor.
For the foregoing reasons, we disagree with appellants’ assertion “that the
present case directly tracks Example 10 of the Revised Interim Utility Guidelines
Training Materials . . . .” Request, bridging sentence, pages 2-3, emphasis
removed. Unlike the facts in this case, the facts set forth in Example 10 of the
Training Materials establish that the sequence disclosed therein encodes a DNA
ligase which has a well-established use in the art. On this record, there is no
evidence that the claimed sequence is a G protein-coupled receptor. Further, for
the reasons set forth in the Decision, even if the claimed nucleic acid encodes a
G protein-coupled receptor, there is no disclosed utility for this receptor. In this
regard, we note that claim 1 encompasses a 22 base pair fragment of SEQ ID
No:43. There is no evidence on this record that this 22 base fragment of SEQ ID
No:43 will encode a function protein.
On reflection, for the reasons set forth above, in addition to those set forth
in the Decision, we reaffirm the rejection of claim 1 under 35 U.S.C. § 101 as
lacking utility and § 112, first paragraph, for lack of enablement based on the
finding of lack of utility. Claims 2, 3 and 6-9 fall together with claim 1.
We have carefully reviewed the original opinion in light of appellants’
request, but we find no point of law or fact which we overlooked or
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013