Appeal 2007-3881
Application 09/833,782
NO: 2 is a neurolysin. The Examiner does not dispute that the GenBank
entry’s amino acid sequence is identical to SEQ ID NO: 2 or that the
researchers who deposited the GenBank entry annotated it as human
neurolysin. We therefore agree with Appellants that the GenBank entry is
persuasive evidence that SEQ ID NO: 2 is the human neurolysin sequence.
The Examiner has conceded that “the utility of animal neurolysins
was already known before the instant application was filed” (Answer 18).
Kato provides evidence supporting the Examiner’s statement.2 Kato
provides a thorough discussion of research on neurolysin (also known as
endopeptidase 24.16, oligopeptidase M, and MOP) (Kato, paragraph
bridging 15313 and 15314). Kato states that neurolysin and endopeptidase
24.15 are “the two best characterized” mammalian metalloendopeptidases
(id. at 15313, right-hand column) and that neurolysin inactivates neurotensin
and has been shown to “have a relatively broad substrate-specificity and
tissue distribution” (id. at 15314, left-hand column).
It is true, as the Examiner points out, that Appellants have pointed to
no experimental data, in the instant Specification or elsewhere, that shows
definitively that the protein of SEQ ID NO: 2 has the activity of neurolysin.
However, a patent applicant need not provide definitive experimental data in
order to show that a claimed invention has patentable utility. Rather, the
Examiner bears the burden of showing a reasonable basis for doubting the
2 The Examiner states that “nowhere in [Kato] one can find the word
‘neurolysin,’” but Kato states that “[t]he enzyme, termed neurolysin or
endopeptidase 24.16, was shown to be distinct from EP 24.15 (TOP) . . .”
(Kato at 15314, middle of left-hand column).
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