Appeal No. 2005-2385
Application No. 09/485,045
Appellants further argue, (Brief, pages 5-6 )
A number of scientific publications available as of the filing date of the
present application, describe specific expression of TGFβ family members,
for example the TGFβ-4 (endometrial bleeding associated factor; ‘ebaf’)
gene, in cell proliferative disorders, including endometrial bleeding and
adenocarcinoma of the colon, ovaries, and testes (see Kothapalli et al. J.
Clin. Invest. 99,2342-2350 (May 15, 1997); and Tabibzadeh et al.,
Frontiers in BioScience 2, a18-25 (July 15, 1997)[)]. ... [T]he
polynucleotide sequence of TGFβ-4 (ebaf), disclosed in US. Pat. No.
5,916,751 (The '751 Patent), contains a region of 303 nucleotides that is
92% homologous to SEQ ID NO: 1 of the subject application. ... Applicants
submit that one skilled in the art, viewing the subject application, and
having knowledge of the Kothapalli et al. and Tabibzadeh et al.
references, would immediately appreciate that the polynucleotides of the
invention ... are useful in the detection of TGFβ family members, such as
TGFβ-4 (ebaf), whose expression is correlated with cell proliferative
disorders.
We agree with appellants that one of ordinary skill in the art, viewing the subject
application and having knowledge of the ‘571 patent and Kothapalli and Tabibzadeh
references, would appreciate that the claimed GDF-16 polynucleotide would have been
useful in the detection of TGFβ family members, such as TGFβ-4 (ebaf), whose
expression is correlated with cell proliferative disorders.
An invention has a well-established utility if (i) a person of ordinary skill in the art
would immediately appreciate why the invention is useful based on the characteristics of
the invention (e.g., properties or applications of a product or process), and (ii) the utility
is specific, substantial, and credible. See, e.g., In re Folkers, 344 F.2d 970, 145 USPQ
390 (CCPA 1965). “[U]sefulness of a chemical compound is invariably a manifestation
of a given property of that compound. ... [S]ome uses can be immediately inferred from
a recital of certain properties. The question here is ... whether knowledge of that
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