Appeal No. 2005-0731 Page 14
Application No. 09/974,712
Thus, the record contains no evidence that those skilled in the art, as of the
effective filing date of the instant application, would have recognized the claimed
sequence as “a voltage-gated potassium channel (a variant of KCNA7).” Appellants’
arguments that rely on that recognition are based on a later state of the art and are
therefore unpersuasive.
Appellants also argue that the claimed polynucleotides are useful because of the
disclosed polymorphisms in SEQ ID NO:1: “Naturally occurring genetic polymorphisms
such as those described in the present specification are both the basis of, and critical to,
inter alia, forensic genetic analysis and genetic analysis intended to resolve issues of
identify and paternity. . . . Such polymorphisms are the basis for forensic analysis,
paternity identification and population biology studies, which are undoubtedly ‘real
world’ utilities and thus the presently claimed sequences must in themselves be useful.”
Appeal Brief, pages 15-16.
This argument is not persuasive because, among other things, it lacks support in
the specification or in the evidence of record. The specification discloses the presence
of two polymorphisms in SEQ ID NO:1 (page 16) but discloses no utilities based on
detection of the polymorphisms. In particular, the specification does not disclose that
the polymorphisms are useful markers for forensic analysis.
Appellants point to three passages in the specification as support for the
asserted utility. See the Appeal Brief, page 15: “[A] still further example of utility of the
present sequences is their use in diagnostic assays such as those associated with
identification of paternity and forensic analysis, among others (for example, the
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007