Appeal No. 2004-1040 Page 14
Application No. 09/770,643
disclose any biological processes that have been associated with casprs and, more
specifically, the specification provides no information regarding what biological functions
or activities involve the polypeptides encoded by the instantly claimed nucleic acids.
Nor have Appellants provided other evidence to show that the biological activity
or role of the protein of SEQ ID NO:2 would have been apparent to those skilled in the
art at the time this application was filed.4 The only prior art cited by Appellants that
bears on the activity of caspr proteins is Poliak,5 of which only the abstract is of record.
Poliak discloses that the protein Caspr2 is found in a particular part (the “juxtaparanodal
region”) of nerve cells (myelinated axons) and suggests that Caspr family members may
have a role in “the local differentiation of the axon into distinct functional subdomains.”
Appellants have provided no explanation of how Poliak’s disclosure would have
suggested a well-established utility for other caspr proteins to those skilled in the art,
and no such utility is apparent to us.
Appellants argue that the examiner “admit[ted] that casprs have a specific utility,
due to their association with ‘myelinated axons and potassium channels,’” citing the
Final Action (Paper No. 14) at page 3. We have reviewed the Final Action and do not
find that the examiner has admitted that the instantly claimed invention has utility.
4 Whether a claimed invention is supported by a disclosure of utility sufficient to satisfy 35 U.S.C. § 101 is
determined as of the filing date of the application. See In re Brana, 51 F.3d 1560, 1566 n.19, 34 USPQ2d
1436, 1441 n.19 (Fed. Cir. 1995) (“Enablement, or utility, is determined as of the application filing date.”).
Therefore, we have not considered any of the references cited by the examiner or by Appellants that were
published after the effective filing date of the present application.
5 Poliak et al., “Caspr2, a new member of the neurexin superfamily, is localized at the juxtaparanodes of
myelinated axons and associates with K+ channels,” Neuron, Vol. 24, pp. 1037-1047 (1999).
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