Appeal No. 2005-1422 Page 20
Application No. 09/997,522
protein’s function. The examiner characterizes these references as showing
“that function cannot be predicted based solely on structural similarity to a protein
found in the sequence databases.” Supplemental Answer, page 4.
In our view, the references cited by the examiner show that sequence
similarity does not always accurately predict function, because of potential
inaccuracies in the sequence databases and because function does not
necessarily follow from a limited amount of similarity. However, the evidence
does not support a per se rule that structural similarity by itself cannot accurately
predict function. Each case must be considered on its own facts. On this record
the examiner makes no attempt to address the structural similarity of the claimed
nucleic acid sequences with the human thrombin receptor or to establish any
evidence tending to demonstrate that appellants’ specification is inaccurate in its
disclosure that “[t]his invention relates to nucleic acid and amino acid sequences
of a new human thrombin receptor homology….”
Accordingly, we find that the examiner failed to meet his evidentiary
burden of establishing that appellants’ disclosure fails to establish a utility for the
claimed invention. We therefore reverse the rejection of claims 3-7, 9, 10, 12,
13, 57 and 58 stand rejected under 35 U.S.C. § 101 as lacking utility and
§ 112, first paragraph, for lack of enablement based on the finding of lack of
utility.
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