Appeal No. 2005-0102 Page 9
Application No. 09/840,787
that “the mitochondrial carrier family of proteins includes carriers involved in the transport
of ions and charged metabolites between the cytosol and the mitochondrial matrix.”
Appeal Brief, page 15. We can assume, for the sake of argument, that Appellants are
correct in asserting that HRM-19 is likely to be a mitochondrial carrier protein.1
That assertion, however, does not establish the patentable utility of the claimed
polynucleotides, because Appellants do not explain what utility is shared by mitochondrial
carrier proteins. That is, assuming that HRM-19 is a mitochondrial carrier protein that is
involved in transporting ions and charged metabolites between the cytosol and the
mitochondrial matrix, how does that make it useful to a person of skill in the art?
Appellants provide no answer to this question and none is apparent to us from the
evidence of record.2 Therefore, we find that classifying a protein as a mitochondrial
carrier protein does not, by itself, disclose a specific and substantial utility to those skilled
in the art.
Finally, Appellants assert that “[t]he Lal declaration clearly demonstrates that the
transcripts for HRM-19 were significantly, differentially, up-regulated (overexpressed) in
lung tissue samples from cancer patients as compared to matched normal samples from
the same patient. Therefore, HRM-19, and the cDNA encoding it, are of diagnostic use in
detecting lung cancers.” Appeal Brief, pages 17-18. Appellants also assert that “[t]he use
of polynucleotides encoding HRM to detect cancer, and the association of increased
1 The examiner disputes this assertion, but we need not resolve the dispute in this case.
2 We have not considered the Yu et al. reference cited on page 16 of the Appeal Brief. That reference
was published in 2001, while the instant application apparently has an effective filing date of September
23, 1997. “Enablement, or utility, is determined as of the application filing date.” In re Brana, 51 F.3d
1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19 (Fed. Cir. 1995). Post-filing evidence can be considered
only to the extent that it shows the state of the art as of the effective filing date. See In re Hogan, 559
F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977) (“[U]se of later publications as evidence of the state of
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007