Appeal No. 2004-1761 Page 13
Application No. 10/044,807
We do not find Appellants’ comparison with the GenBank sequence of an
ADAMTS-like protein to establish the function or utility of the protein encoded by the
claimed polynucleotides. First, Appellants have provided no sequence comparison
showing exactly how the two protein sequences compare; thus, we have nothing but
Appellants’ characterization to show that the sequences are “nearly 100%” identical
“over an extended region.” Even assuming Appellants’ characterization is objectively
accurate, however, that sequence similarity would not suffice to establish the function or
activity of the encoded protein. The longest of the GenBank sequences is only 683
amino acids long, while SEQ ID NO:2 is 1762 amino acids long (specification, page 2,
lines 10-12. Thus, the protein encoded by the claimed polynucleotides is more than
twice as long as the GenBank sequence; no explanation has been provided regarding
the effect of the uncharacterized 60% of the encoded protein on its activity.
Finally, even assuming that the protein encoded by the claimed polynucleotides
is accurately characterized as an ADAMTS-like metalloprotease, neither the
specification nor any evidence of record discloses any utility that would be implied by
such a characterization. The evidence of record does not disclose the role of such
proteases in any biological process, or the proteins that are cleaved by such proteases,
or the effect that proteolytic cleavage has on the subject proteins (e.g., activation of a
proenzyme or degradation of the substrate). For all these reasons, we agree with the
examiner that the claimed polynucleotides are not supported by a disclosed, patentable
utility based on the encoded protein.
Appellants also argue that the claimed polynucleotides are useful because of the
disclosed polymorphisms in SEQ ID NO:1: “As such polymorphisms are the basis for
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