Appeal No. 2005-1422 Page 19
Application No. 09/997,522
1. An isolated and purified polynucleotide encoding a thrombin
receptor homolog (TRH) comprising the amino acid sequence of
SEQ ID NO: 2.
3. The polynucleotide of claim 1 comprising a recombinant DNA
molecule whose nucleotide sequence is shown as SEQ ID NO[:]
1.
Since the specifications of the three patents and the instant specification
are the same, SEQ ID NOs: 1 and 2 as well as the utilities presented are
expected to be the same. The claims of an issued patent are entitled to a
presumption of validity. 35 U.S.C. § 282. This includes a presumption that the
claims define an invention that meets the requirements of 35 U.S.C. § 101.
Thus, the examiner in this case must meet a heightened burden of proof, since
showing that the instant claims lack utility would apparently mean showing that
claims issued in the ‘870, ‘633, and ‘597 patents also lack utility.
On this record, the examiner finds (Supplemental Answer, page 3),
[i]t is clear from the instant specification that the claimed
receptor is what is termed an “orphan receptor” in the art. The
instant application does not disclose the biological role of the
protein encoded for by the claimed polynucleotide, or its
significance. Applicants disclose in the specification that this
receptor is believed to be a thrombin receptor. However, the basis
that the receptor encoded for by the polynucleotide of the present
invention is only known to be homologous to thrombin receptors
(page 2, lines 21-26 of the specification) is not predictive of a use.
In support of this rejection the examiner relies on Skolnick, Bork I, Bork II,
Doerks, Smith, and Brenner, to support his position. Collectively, these
references show two things: (1) comparing a new protein with existing
sequences does not always accurately predict the function of the new protein
and (2) minor changes in amino acid sequence can result in major changes in a
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