Appeal No. 2007-0311
Application No. 10/175,744
The Examiner acknowledges the claim to priority to provisional
application 60/080,333 and the disclosure in that application that SEQ ID
NO:74 has homology to protein disulfide isomerase (PDI) proteins (id.).
The Examiner finds that “[b]ased on sequence homology to known catalytic
sites, the argument that the polypeptide of SEQ ID NO:74 is a PDI family
member and shares some function[al] characteristics with other PDI family
members is convincing” (Answer 7-8).
Nevertheless, the Examiner concludes that the provisional application
did not disclose any specific and substantial utility for the instantly claimed
antibodies (id. at 4-5). Specifically, SEQ ID NO:74 and the claimed
antibodies are asserted to be useful only for treating unspecified disorders or
cancers associated with protein misfolding (id. at 7). The Examiner
concludes that “[w]ithout identifying a specific disorder, use of the claim[ed]
antibodies as a therapeutic for an unspecified cancer characterized by protein
misfolding is not a specific or substantial use” (id. at 9).
We agree with the Examiner that Appellants have not disclosed a
patentable utility for the claimed antibodies. Section 101 requires a utility
that is both substantial and specific. See In re Fisher, 421 F.3d 1365, 1371,
76 USPQ2d 1225, 1229 (Fed. Cir. 2005). The Fisher court held that
disclosing a substantial utility means “show[ing] that an invention is useful
to the public as disclosed in its current form, not that it may prove useful at
some future date after further research. Simply put, to satisfy the
‘substantial’ utility requirement, an asserted use must show that that claimed
invention has a significant and presently available benefit to the public.” Id.,
76 USPQ2d at 1230.
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