Appeal No. 2004-1040 Page 15
Application No. 09/770,643
Granted, the examiner states that “Casprs, for example, appear to associate with
myelinated axons and potassium channels and it is the involvement with these functions
which confer[s] a specific utility to Caspr proteins.” Page 3. However, the examiner
provided no further explanation of precisely what “specific utility” is conferred on casprs
by virtue of their association with myelinated axons and potassium channels.
Moreover, the above-quoted statement must be read in context. The examiner
concluded that, despite what was known about casprs generally, “one of ordinary skill in
the art, only knowing that the proteins of the present invention are caspr proteins, . . .
would still not know what the specific utility of these proteins was, other than the fact
that they mediate neuronal processes. Therefore, one of ordinary skill in the art would
not know how to use a protein, or a gene, which is only known to generally be involved
in neuronal processes, along with potentially hundreds or thousands of proteins.” Id.,
pages 3-4. These statements, along with the examiner’s decision to maintain rejections
of lack of utility, show that he did not intend to admit that the presently claimed invention
has patentable utility.
Thus, the record does not support Appellants’ position that the characterization of
a polypeptide as neurexin-like or as a caspr protein would have suggested a specific
biological function, or any other basis for patentable utility, to a person skilled in the art
at the time the application was filed. In the terms used by the Brenner Court, such a
characterization does not provide a specific utility in currently available form. We are
not persuaded Appellants’ argument that the claimed polynucleotides have utility by
virtue of the “sequence similarity” of the encoded polypeptide to neurexins and
contactin-associated proteins (casprs).
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