Appeal No. 2006-2131 Page 7
Application No. 10/309,422
by the claimed nucleic acids is similar to “eucaryotic GPI-anchored P137 proteins,”
because Grill does not provide any comparison of caprin-1 with the proteins disclosed in
this application. Nor does Grill provide evidence that the proteins encoded by the
claimed nucleic acids would have been recognized as “tumor-associated proteins” as of
the filing date, because there is no evidence of record that the protein renamed caprin-1
by Grill was recognized as tumor-associated as of this application’s filing date.
Grill’s post-filing disclosure that caprin-1 is apparently involved in cellular
activation or proliferation does not support the utility of the instantly claimed nucleic
acids, because the instant application does not disclose that the claimed nucleic acids
encode caprin-1, and there is no evidence of record that shows that p137 was known to
those skilled in the art to be involved in cellular proliferation as of this application’s filing
date. The evidence of record does not reveal any specific and substantial utility for
proteins similar to “eucaryotic GPI-anchored P137 proteins,” disclosed in either the
specification or prior art.
In addition, the specification’s disclosure that the encoded proteins are “similar to
. . . tumor-associated proteins, and precursors of secreted proteins” would not allow those
skilled in the art to use them in a specific and substantial way. Appellants argue that the
specification teaches that “diseases associated with the presently claimed sequences
include ‘cancer’ (the specification at page 16, line 21).” Appeal Brief, page 12.
We disagree. The relevant sentence reads as follows: “[T]he described NHPs
can be targeted . . . in order to treat disease, or to therapeutically augment the efficacy
of, for example, therapeutic agents used in the treatment of . . . cancer.” Thus, the cited
passage does not say that the proteins encoded by the claimed nucleic acids are useful
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