Appeal No. 2006-0732 Page 6
Application No. 10/060,974
protein and therefore confirms the patentable utility of the claimed invention. See id.,
page 4.
We do not agree that the claimed nucleic acids have utility because they encode
an apparent sodium transporter protein. While post-filing evidence may be used to show
the accuracy of a statement in the specification, it cannot be relied on to “render an
insufficient disclosure enabling.” Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at 1441 n.19.
Thus, Appellants can rely on the cited GenBank record and the Li reference for
the limited purpose of showing the accuracy of the specification’s statement that SEQ
ID NO:2 encodes a protein that “shares structural similarity with mammalian
transporters, and particularly sodium iodide cotransporters or symporters and
multivitamin transporters.” However, they cannot rely on the substantive disclosures of
the post-filing references for the disclosure that, e.g., SLC5A8 is a putative tumor
suppressor.
Utility is determined as of the effective filing date of the application. See Brana,
51 F.3d at 1567 n.19, 34 USPQ2d at 1441 n.19. Here, the specification disclosed that
the protein encoded by the claimed nucleic acids was likely to be a sodium transporter,
and this disclosure was confirmed by post-filing evidence. The relevant question with
respect to utility, then, is whether a specific and substantial utility for a sodium
transporter was disclosed in the specification or well known in the art as of this
application’s effective filing date (February 2, 2001).
The evidence of record does not reveal any specific and substantial utility for
sodium transporters, disclosed in either the specification or prior art. The specification
does not disclose the role played by the protein of SEQ ID NO:2 in any biological
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007