Appeal No. 2005-2385
Application No. 09/485,045
property necessarily and implicitly renders it readily apparent to one of ordinary skill that
the present compounds are useful.” Id., 344 F.2d at 972, 145 USPQ at 393. The courts
have also repeatedly held that all that is required is a reasonable correlation between
the activity and the asserted use. Nelson v. Bowler, 626 F.2d 853, 857, 206 USPQ 881,
884 (CCPA 1980).
In the present case, the utility of GDF-16 is a manifestation of its homology with
ebaf. In the present case we do not find that the examiner has given appropriate
consideration to the understanding gleaned by one of ordinary skill in the art reading the
present disclosure in the context of the state of the prior art. In our view, appellants’
evidence establishes it was known in the art that the nucleotide sequence of TGFβ-4
(ebaf) was correlated with cell proliferative disorders. See ‘517 patent, abstract. In
addition, one of ordinary skill in the art reading appellants’ specification and becoming
aware of the nucleotide and amino acid sequences of GDF-16 would have understood
that the 303 nucleotide sequence of GDF-16 and/or complements thereto could be used
for detection of the ebaf gene and its associated cell proliferative disorders in view of
GDF-16's 92% homology with a relatively large portion of the ebaf gene.
The examiner fails to acknowledge the correlation between the homology of the
claimed GDF-16 sequence to the known ebaf gene, associated with cell proliferative
disorders. In our view, the state of the prior art and the meaning of the disclosure
when viewed through the eyes of one of ordinary skill in the art supports the utility of the
claimed invention.
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