Appeal No. 2006-2131 Page 6
Application No. 10/309,422
of the filing date of this application. See Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at
1441 n.19 (utility determined as of application’s filing date).
Thus, Appellants can rely on the cited GenBank records and post-filing references
for the limited purpose of showing the accuracy of the specification’s statement that SEQ
ID NOs 16 and 28 encode a protein that is “similar to those related to eucaryotic GPI-
anchored P137 proteins . . . , tumor-associated proteins, and precursors of secreted
proteins.” Page 15. The post-filing references cannot be relied on, however, for
disclosures that do not reflect the state of the art as of this application’s filing date. See
In re Hogan, 559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977) (“[U]se of later
publications as evidence of the state of art existing on the filing date of an application” is
acceptable.).
The specification states that the disclosed sequences are “similar to those
related to eucaryotic GPI-anchored P137 protein[ ] (which is thought to facilitate
transport of materials across epithelial surfaces), tumor-associated proteins, and
precursors of secreted proteins.” Page 15. Grill2 discloses that a cDNA that had been
“previously mischaracterized as encoding p137, a 137-kDa GPI-linked membrane
protein,” was apparently involved in cellular activation or proliferation. Grill proposed
renaming the protein as “cytoplasmic activation/proliferation associated protein-1
(caprin-1).”
This post-filing evidence does not provide support for the statements in the
specification. It does not support the specification’s assertion that the protein encoded
2 Grill et al., “Activation/division of lymphocytes results in increased levels of cytoplasmic
activation/proliferation-associated protein-1: prototype of a new family of proteins,” J. Immunol., Vol. 172,
pp. 2389-2400 (2004). Only the abstract of Grill is of record (Exhibit C attached to the Appeal Brief), not
the full-text paper, so we have considered only the abstract.
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