Appeal No. 2006-0732 Page 5
Application No. 10/060,974
In this case, the examiner found the specification’s disclosure to be inadequate
because the “claims are drawn to an isolated nucleic acid molecule and the protein
encoded thereby of as yet undetermined function or biological significance. . . . In the
absence of knowledge of the biological significance of this specific nucleic acid of SEQ
ID NO: 1 and encoded protein of SEQ ID NO: 2, there is no immediately obvious
patentable use for the polynucleotide or the encoded protein.” Examiner’s Answer,
pages 4-5. With regard to the asserted utility in treating disease, the examiner pointed
out that the specification
fails to provide any evidence or sound scientific reasoning that would
support a conclusion that the instant nucleic acid or encoded protein is
associated with any diseases or disorder. . . . The instant application also
fails to demonstrate use of the protein as a marker for any specific disease
or condition (which would be a real world use).
Examiner’s Answer, page 5.
Appellants argue that “the presently claimed sequence shares greater than 99%
identity at the amino acid level . . . with a sequence that is present in the leading
scientific repository for biological sequence data (GenBank), which has been annotated
by independent third party scientists wholly unaffiliated with Appellants as Homo
sapiens sodium solute symporter family 5 member 8 protein (SLC5A8).” Appeal Brief,
page 3.2 Appellants also cite a scientific article as further evidence that the claimed
sequence encodes a sodium transporter. Id., pages 3-4.3 Appellants argue that the
evidence supports the specification’s assertion that SEQ ID NO:2 is a transporter
2 “Appeal Brief” in this opinion refers to the Amended Appeal Brief filed August 8, 2005. The pages in the
Appeal Brief are unnumbered but we have inferred the intended numbering from its Table of Contents.
3 Appellants cite Li et al., “SLC5A8, a sodium transporter, is a tumor suppressor gene silenced by
methylation in human colon aberrant crypt foci and cancers,” Proc. Natl. Acad. Sci. USA, Vol. 100, pp.
8412-8417 (2003).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007