Ex Parte Mathur et al - Page 3


                 Appeal No. 2003-2017                                                         Page 3                    
                 Application No. 09/802,116                                                                             

                 proteins (KIPs), including but not limited to KIP 1, KIP 2, and variants thereof.                      
                 Like KIPs, the described protein also shares structural similarity with the                            
                 phosphatase component . . . of calcineurin B.  As such, the novel polynucleotides                      
                 encode a new kinase interacting protein.”  Page 2.                                                     
                        The specification also discloses that                                                           
                        [k]inases mediate phosphorylation of a wide variety of proteins and                             
                        compounds in the cell.  In conjunction with phosphatases, kinases                               
                        are involved in a wide range of regulatory pathways and processes.                              
                        Given the physiological importance of kinases, they and proteins                                
                        with which they interact have been subject to intense scrutiny and                              
                        are proven drug targets.                                                                        
                 Page 1.  The specification does not indicate what role kinase-interacting proteins                     
                 play in any physiological process, but it does speculate that “[g]iven the strong                      
                 homology to KIPs, the described NHP may mediate DNA repair.”  Page 15.                                 
                        The specification also suggests a number of potential uses for the                              
                 claimed polynucleotides that do not depend on the function of the encoded                              
                 protein.  For example, the specification discloses that “knock-out” mice can be                        
                 made that do not express the disclosed gene; “[w]hen the unique NHP                                    
                 sequences described in SEQ ID NOS:1-2 are ‘knocked-out’ they provide a                                 
                 method of identifying phenotypic expression of the particular gene as well as a                        
                 method of assigning function to previously unknown genes.”  Page 2.  The                               
                 specification also discloses that “the unique NHP sequences described in SEQ                           
                 ID NOS:1-2 are useful for identification of coding sequence and the mapping [of]                       
                 a unique polynucleotide to a particular chromosome.”  Id.                                              








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