Appeal No. 2004-1369 Page 24
Application No. 08/966,233
nor does the evidence show that it was known to those skilled in the art at the
time this application was filed. According to the examiner (Answer, page 22), the
references relied upon in support of the assertions made in the Ebendal
declaration were derived from post-filing date references. Accordingly, we are
not persuaded by the Ebendal declaration.
IV. The locus of GDF-1 expression:
According to appellant (Brief, page 12), “Figure 7 of the specification
shows that GDF-1 is expressed almost exclusively in the brain. Thus, a GDF-1
nucleic acid may be used to determine for instance whether a brain tumor is a
primary tumor or a metastasis from a tissue that does not express GDF-1.” As
the examiner points out, however, appellant’s specification discloses (page 23
and Figure 7), “[n]orthern analysis demonstrated that the GDF-1 probe detected
an mRNA species in adult brain, adrenal gland, ovary, and oviduct.” Answer,
page 25. In addition, the examiner finds (id.), “[t]he specification does not
identify any tumor (brain or otherwise) associated with GDF-1 nor enable any
such diagnostic or therapeutic uses.” To the contrary, we find that the
specification discloses (page 14), “[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.”
Accordingly, we are not persuaded by appellant’s assertion.
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