Appeal No. 2004-1761 Page 12
Application No. 10/044,807
specific protein, with any specific and substantial function, to which the instant protein,
as set forth by SEQ ID NO:2, is homologous.” Id. According to the examiner’s
sequence comparisons, “[s]equence searches showed no consistent homology for the
full-length SEQ ID NO:2 with metalloproteases.” Id. The examiner cited three PCT
patent applications as disclosing sequences having high degrees of homology with SEQ
ID NO:2 but no disclosed function. See id., page 5-6. The examiner concluded that “a
specific and substantial or well-established utility for the polypeptide of SEQ ID NO:2
cannot be deduced based on homology to known proteins.” Id., page 6.
Appellants argue that the protein encoded by the claimed nucleic acids would be
accepted as proteases by those skilled in the art, because
two sequences sharing nearly 100% identity at the protein level over an
extended region of the claimed sequence are present in the leading
scientific repository for biological sequence data (GenBank), and have
been annotated by third party scientists wholly unaffiliated with Appellants
as “Homo sapiens ADAMTS-like 1” variants 1 and 2. . . . [T]here can be
no question that those skilled in the art would clearly believe that
Appellants’ sequence is an ADAMS-like protease, and would thus readily
understand the utility of the presently claimed sequence.
Appeal Brief, page 13.
We do not agree that the similarity of the protein encoded by the claimed nucleic
acids to known proteins establishes its utility. As the examiner pointed out, the
specification discloses that the encoded protein share sequence similarity with a variety
of proteins, having different biological functions and activities. Granted, most of the
similar proteins are proteases, but the specification admits that proteases are involved
in a variety of diverse biological functions (see page 1, lines 25-31) and no specific
function is disclosed for the encoded protein.
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