Appeal No. 2005-2385
Application No. 09/485,045
Tabibzadeh et al (‘751) 5,916,751 June 29, 1999
(Filed Aug. 27 1997)
Tabibzadeh et al. (Tabibzadeh) “Distinct Tumor Specific Expression of TGFB4 (ebaf), A
Novel Human Gene of the TGF-β Superfamily,” Frontiers in Bioscience 2, Vol. 2, pp.
a18-25, (1997)
Kothapalli et al., (Kothapalli) “Detection of ebaf, a Novel Human Gene of the
Transforming Growth Factor β Superfamily,” J. Clin. Invest., Vol. 99, No. 10, pp. 2342-
2350 (1997)
Grounds of Rejection
Claims 2, 4-11 and 53-55 stand rejected under 35 U.S.C. §101 for lack of utility.
Claims 2, 4-11 and 53-55 stand rejected under 35 U.S.C. §112, first paragraph
for lack of enablement.
We reverse these rejections.
DISCUSSION
Utility and Enablement
Claims 2, 4-11 and 53-55 stand rejected under 35 U.S.C. §101 for lack of utility.
Claims 2, 4-11 and 53-55 stand rejected under 35 U.S.C. §112, first paragraph for lack
of enablement.
In support of the rejection for lack of utility, the examiner argues (Answer, pages
3-4)
[t]he claimed invention is not supported by either a specific and substantial
asserted utility or a well-established utility. ... While Appellant lists a
number of conditions for which the protein encoded by the GDF-16
polynucleotide might be used (p. 5 and 6), the specification does not
disclose any activity known to be associated with it. ..... [N]o diseases or
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