Appeal No. 2003-2017 Page 14
Application No. 09/802,116
polypropylene at the time of the filing,” but not yet there. Ziegler, 992 F.2d at
1203, 26 USPQ2d at 1605.
In this case, the examiner found the specification’s disclosure that the
claimed polynucleotides encode a kinase-interacting protein (KIP) was not
sufficient to establish their utility, because the specification does not disclose
(1) the type of kinase interacting protein (KIP) being encoded by the
claimed polynucleotides (i.e., which kinase or kinases will interact
with the KIP of the instant application), (2) the biological processes
or pathways in which the target kinases (i.e.[,] kinases with which
the KIPs interact) or the polypeptide of SEQ ID NO:2 are involved,
[or] (3) the type of interaction (i.e.[,] binding, phosphorylation, etc.)
associated with the KIP of the instant application and how does this
interaction change the target kinase.
Examiner’s Answer, page 7.4 The examiner stated that such information would
be required because, “[a]s known in the art and admitted by Appellants in the
specification, kinases are active in many different biological processes.” Id.
Appellants argue that the examiner’s statement
that the claimed sequence lacks utility because the specification
does not indicate “which type of KIP the polypeptide of SEQ ID
NO:2 is” . . . is beyond belief, and completely misses the point of
determining whether the instant sequence meets the utility
requirement. First, the present specification does in fact indicate
“which type of KIP the polypeptide of SEQ ID NO:2 is”, specifically,
at least at page 2, lines 7-8 – “the novel polynucleotides encode a
new kinase interacting protein.”
Appeal Brief, page 4 (emphasis in original).
4 The examiner also disputed the specification’s characterization of the claimed polynucleotides
as encoding kinase-interacting proteins. See the Examiner’s Answer, pages 4-6. Appellants
argue that the characterization would have been accepted by those skilled in the art, based on
the degree of sequence similarity to known kinase-interacting proteins, and have submitted post-
filing evidence that sequences nearly identical to SEQ ID NO:1 have been characterized by
others in the field as kinase-interacting proteins. We agree with Appellants that the evidence of
record would be accepted by those skilled in the art as establishing that the protein encoded by
SEQ ID NO:1 is likely to be a kinase-interacting protein.
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