Appeal No. 2004-1369 Page 16
Application No. 08/966,233
605, 194 USPQ 527, 537 (CCPA 1977), emphasis original, “use of later
publications as evidence of the state of art existing on the filing date of an
application” is acceptable. Accordingly, we have considered Akhurst as
representative of the state of the art relating to transforming growth factors at the
time the application was filed.
In this regard, we note that appellant emphasizes that Akhurst
characterize the TGF-β superfamily “as ‘a large superfamily of related proteins,
each of which plays a pivotal role in embryonic processes’….” See e.g., Brief,
page 8. We note that the concept of a “pivotal role” appears to be a major
theme in appellant’s Brief. See e.g., Brief, pages 8-10, wherein “pivotal role” is
mentioned no less than five times. There is no doubt that the abstract (page
153) of Akhurst uses the term “pivotal role.” However, what appellant fails to
point out or discuss is Akhurst’s statement (page 155), “[a]s yet there is no
definitive evidence that any of the TGFβs are endogenous regulators of
mammalian embryonic processes.” Accordingly, as we understand the Akhurst
article, while members of the TGF-β superfamily may potentially play a role in
embryonic processes there is, at the time this invention was filed, no definitive
evidence to support this assertion.
Thus, when Akhurst is considered as representative of the state of the art
at the time of appellant’s filing date, it appears that Akhurst would agree with
appellant’s disclosure (specification, page 14) that “[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
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