Appeal No. 2005-0731 Page 15
Application No. 09/974,712
specification at or about page 3, line 10; page 11, line 26 and page 19, line 9).” The
sentences including those lines read as follows:
• “The sequences of the present invention are also useful as additional DNA
markers for restriction fragment length polymorphism (RFLP) analysis, and in
forensic biology.” Page 3, lines 8-10;
• “In addition, the sequences of the present invention can be used to provide
polynucleotide reagents, e.g., PCR primers, targeted to specific loci in the
human genome, which can enhance the reliability of DNA-based forensic
identifications by, for example, providing another ‘identification marker’ (i.e.,
another DNA sequence that is unique to a particular individual).” Page 11,
lines 23-28; and
• “These uses include but are not limited to the generation of antibodies, as
reagents in diagnostic assays, the identification of other cellular gene
products related to NHP, as reagents in assays for screening for compounds
that can be used as pharmaceutical reagents useful in the therapeutic
treatment of mental, biological, or medical disorders and diseases.” Page 19,
lines 7-13.
We do not find those passages to support the asserted utility. In each of the
cited passages, the specification is discussing uses for the claimed DNA itself or the
protein encoded by the claimed DNA. Appellants have pointed to nothing in the
specification that discloses that the polymorphisms in the DNA are useful in, e.g.,
forensic analysis.
In addition, even assuming that those skilled in the art would have understood
the cited passages to refer to the use of the polymorphisms in forensic analysis,
Appellants have not shown that the skilled worker would have found the specific
polymorphisms present in SEQ ID NO:1 – without analysis of their degree of variability
in the human population and without associating them with any other genetic marker –
to be useful as argued. Thus, the polymorphism-based utility asserted in the Appeal
Brief lacks evidentiary support and cannot be relied on to overcome the rejection.
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