Appeal No. 2005-2207 Page 8
Application No. 09/548,933
The examiner concedes that “hHAC3 [ ] is structurally related to a voltage-gated
cation channel family of proteins, specifically it is related to the family of
hyperpolarization-activated channels (HAC)” (Answer, page 4). The examiner also
concedes that “[o]ne skilled in the art [would] readily understand[ ] that hyperpolarization-
gated cation channels could certainly be involved in modulation of cellular excitability” (id.,
page 9), and “could be associated with [the] etiology or development of migraine and
epilepsy” (id.).
Nevertheless, the examiner argues that the “asserted utility of [the] HAC3 channel
as a modulator of cell excitability is not specific because it is associated with a general
physiological function of regulating a membrane potential in a cell” (id., page 12,
emphasis ours). The examiner also argues that the asserted utility is not substantial
because the identification of hHAC3 as “a novel cation channel does not unequivocally
lead to the conclusion that it is directly associated with dysfunctions, disorders or
conditions in which cation channels are known to be involved” (id.). We disagree with the
examiner’s analysis and conclusions.
First, the examiner has not explained why modulating cellular excitability or
regulating membrane potential does not “provide a well-defined and particular benefit to
the public.” See Fisher, 421 F.3d at 1371, 76 USPQ2d at 1230. The fact that all cells
have a membrane potential, and that there are many classes of channels that modulate
membrane potential and cell excitability, does not mean that identifying modulators of one
particular type of channel (in this case disclosed to be a hyperpolarization-activated,
cyclic nucleotide-gated channel that generates a mixed sodium/potassium Ih pacemaker
current) does not provide a specific, well-defined and particular benefit to the public,
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