Appeal No. 2005-0792 Page 13
Application No. 09/750,373
specification. … To employ a protein [encoded by a
polynucleotide] of the instant invention in the identification of
substances which bind to and/or mediate activity of the said
receptor is clearly to use it as the object of further research….
We agree with the examiner that the specification’s disclosure is
inadequate to provide a substantial utility for the claimed invention. As the
examiner points out (Answer, page 5), the disclosed utilities 5 for the claimed
nucleic acid molecule, and the polypeptide encoded thereby, amount to no more
than research on the claimed invention itself. Because the specification fails to
disclose the biological activity of the protein encoded by the claimed nucleic
acids, none of the disclosed utilities that depend on that biological activity could
be practiced without the expectation of a great deal of further experimentation.
Cf. Answer, pages 6-7. Thus, the specification does not provide a specific utility
for the claimed invention, in currently available form.
Notwithstanding the multitude of different diseases which appellants
postulate that the claimed polynucleotide and a protein encoded thereby would
5 As discussed above, the appellants postulate (Specification, bridging paragraph, pages 99-100)
that the expression of nGPCR-1007 in the central nervous system, lymph node, thyroid gland,
and testis
provides an indication that modulators of nGPCR[-1007] activity have utility for
treating metabolic diseases (e.g., type 2 diabetes, obesity, anorexia,
hypertension, atherosclerosis, etc.); and thyroid disorders (e.g.[,] thyroitoxicosis,
myxoedema); inflammatory conditions (e.g., Chron’s disease); rheumatoid
arthritis; autoimmune disorders; movement disorders; CNS disorders (e.g., pain
including migraine; stroke; psychotic and neurological disorders; including
anxiety, mental disorder, manic depression, anxiety, generalized anxiety
disorder, post-traumatic-stress disorder, depression, bipolar disorder, delirium,
dementia, severe mental retardation; dyskinesias, such as Huntington’s disease
or Tourette’s Syndrome; attention disorders including ADD and ADHD, and
degenerative disorders such as Parkinson’s, Alzheimer’s; movement disorders,
including ataxias, supranuclear palsy, etc.); among others.
In addition, while appellants assert (Brief, page 3) that “the present invention is useful, inter alia,
in the diagnosis and treatment of asthma and diabetes,” the specification discloses (page 62,
emphasis added) only that “nGPCR-x may be useful in the treatment of respiratory ailments such
as asthma….”
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