Appeal No. 2004-1346 Page 19
Application No. 08/971,338
degree of specificity that GDF-1 will share the activity of a particular TGF-β
isoform, or any other particular member of the TGF-β superfamily to which GDF-
1 is least homologous with.
Accordingly, we also disagree with appellant’s assertion (Brief, page 9)
that “the [e]xaminer provides no evidence that those of skill in the art at the time
the invention was made would have believed that members of the TGF-β super
family exhibit such diverse activities as to preclude prediction of function based
on this family assignment.” In our opinion, as discussed above, the evidence
relied upon by appellant – Akhurst – speaks for itself.
Thus, while appellant asserts (Brief, page 9), the specification “predicted
that the GDF-1 protein was likely to play an important role in mediating
developmental decisions related to cell differentiation…,” appellant’s
specification fails to identify what precise role GDF-1 plays. In this regard, we
agree with the examiner (Answer, page 14), “the specification is an invitation to
experiment without clear direction or guidance as to the particular biological
activity to investigate.”
III. Post-filing date evidence:
Appellant asserts (Brief, page 10), “[t]he Rankin reference was submitted
to demonstrate that the GDF-1 protein has the utilities that were predicted in the
specification, and is suitable evidence for that purpose even though it was
published after the filing date of the present application.” In this regard,
appellant asserts (id.), Rankin’s “results with the GDF-1 knockout mouse prove
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