Appeal No. 2005-0731 Page 12
Application No. 09/974,712
polynucleotide of the present invention has biological activities similar to these
channels.” Examiner’s Answer, page 4.3
The examiner noted Appellants’ assertion of utilities based on the polymorphic
positions in SEQ ID NO:1 but found them unpersuasive because, among other things,
“there is no correlation disclosed between the presence of any of these polymorphisms
and the effect of the presence of any of these polymorphisms on the risk of any disease
or disorder.” Page 9. Finally, the examiner considered the uses asserted by Appellants
that do not depend on a specific biological activity, but concluded that these uses are
not specific enough to satisfy § 101. Id.
Appellants argue that
a sequence that is 99.781% percent identical at the amino acid level over
the entire length of the described sequence (SEQ ID NO:2) is present in
the leading scientific repository for biological sequence data (GenBank),
and has been annotated by third party scientists wholly unaffiliated with
Appellants as “Homo sapiens voltage-gated potassium channel
KCNA7”. . . . Thus clearly the evidence of record supports Appellant’s
[sic] assertion that the sequences of the present invention encode a novel
human ion channel, in particular a voltage-gated potassium channel (a
variant of KCNA7).
Appeal Brief, page 7.
This argument is not persuasive. “Enablement, or utility, is determined as of the
application filing date.” Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at 1441 n.19. The
effective filing date of the instant application is October 11, 2000 (the filing date of
provisional application 60/239,623, to which the instant application claims benefit). The
3 The examiner also criticized the specification’s reliance on sequence similarity as a basis for inferring
the function of the claimed NHP. See the Examiner’s Answer, pages 4-5. Appellants argue that
sequence comparisons are well-accepted, although perhaps not universally accepted, in the art as a
reasonable basis on which to predict function. See the Appeal Brief, pages 10-15. We need not decide
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