Appeal No. 2005-0102 Page 6
Application No. 09/840,787
Even if this protein is a mitochondrial carrier protein, one of ordinary skill in
the art would not know which compound is a substrate for the carrier.
Humans produce many mitochondrial carriers and each mitochondrial
carrier is expected to have a specific substrate(s) and function that cannot
be predicted based on sequence homology alone. The art teaches that
there are many mitochondrial carriers that import various metabolites,
nucleotides, cofactors and compounds which are not synthesized in
mitochondria.
Examiner’s Answer, page 5 (citing Palmieri, “Mitochondrial carrier proteins,” FEBS
Letters, Vol. 346, pp. 48-54 (1994), of record).
The examiner also noted that the specification discloses that HRM-19 is similar
to a protein from C. elegans but concluded that this, too, failed to suggest a patentable
utility, because “[t]he sequence search performed by US PTO shows that SEQ ID
NO:19 has about 35% homology with C. elegans C16C10 that is defined by GenBank
as ‘similar to carrier protein’, i.e. similar to a protein for which the function is not
established.” Examiner’s Answer, page 5. The examiner concluded that “a protein of
SEQ ID NO:19 is an uncharacterized protein with no known specific function.” Id., page
6.
With respect to the specification’s disclosure that polynucleotides encoding SEQ
ID NO:19 can be used to detect the level of expression of the corresponding gene, the
examiner noted that “for a method of detection of a nucleic acid in a sample to be
useful, one must know the biological significance of the polypeptide(s) which is(are)
being detected. Without this information, the results of the expression profile are
useless because one would not know . . . what significance could be attributed to such
changes in expression profiles. Without this knowledge, which could not be gleaned
from the instant specification as filed, one of ordinary skill in the art at the time the
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