Appeal No. 2004-1346 Page 13
Application No. 08/971,338
for purification of GDF-1 proteins (claims 24-30) also lacks
patentable utility.
According to the examiner (Answer, page 8),
[t]he specification speculates on possible activities of GDF-1. None
of the particular activities disclosed for other TGF-β superfamily
members have been demonstrated for this protein in the
specification and none were known at the time of the invention.
None of the uses set forth in the specification could be practiced at
the time of the invention without undue experimentation. Providing
a laundry list of potential uses [as set forth in appellant’s
specification], some of which are diametrically opposed to each
other, is not deemed to be enabling.
To emphasize the “laundry list” of potential uses set forth in appellant’s
specification the examiner reproduces portions of appellant’s disclosure found at
pages 1, 2, 12-15, and 20 into the answer. See Answer, pages 8-13. For
example, the portions of appellant’s specification reproduced by the examiner
identify several potential uses for GDF-1 including, inter alia, “as a specific
marker for the presence of tumors arising from cell types that normally express
GDF-1” (specification, page 12; Answer, page 10); “as an indicator for the
presence of developmental anomalies in prenatal screens for potential birth
defects” (id.); and “in prenatal screens for genetic diseases that either directly
correlate with the expression or function of GDF-1 or are closely linked to the
GDF-1 gene” (specification, page 13; Answer, page 11). Nevertheless, despite
the assertion of “potential uses for GDF-1” appellant admits (specification, page
14; Answer, page 12), “[a] determination of the specific clinical settings in which
GDF-1 will be used as a diagnostic or as a therapeutic tool await further
characterization of the expression patterns and biological properties of GDF-1
both under normal physiological conditions and during disease states.”
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