Appeal No. 2006-3253 Page 5
Application No. 10/276,547
2. Utility
The examiner rejected claims 102 and 104 under 35 U.S.C. §§ 101 and 112, first
paragraph, as lacking patentable utility. The examiner reasoned that
[t]he instant application does not disclose a specific biological role for this
protein or its significance to a particular disease, disorder or physiological
process, which one would wish to manipulate for a desired clinical effect.
Therefore, the instant claimed method of screening for compounds that
bind to the protein of unknown physiological significance as potential
candidate therapeutic agents does not meet the requirements of 35 U.S.C.
§ 101 as being useful.
Examiner’s Answer, page 3.
With respect to the similarity of SEQ ID NO:2 to a protein from Drosophila
melanogaster, the examiner noted that “since the specific biological role of the
Drosophila dopamine 1 receptor precursor protein is currently unknown, there appears
to be no scientific reason to assign any particular function to the instant protein of SEQ
ID NO:2 based solely on their limited structural similarity.” Id., page 5. Finally, the
examiner concluded that “[w]ithout knowledge of the natural ligand of the claimed DA-
like GPCR, one would not know the specific pathway that is regulated by this instant
GPCR, and, consequently, [would] not be able to use the claimed polypeptide [sic,
agonist or antagonist of the polypeptide] to regulate any physiological function.” Id.,
page 6.
We agree with the examiner that the specification does not disclose a patentable
utility for the “candidate therapeutic agents” identified via the claimed screening method,
and that, therefore, the claimed method lacks patentable utility. The U.S. Court of
Appeals for the Federal Circuit recently addressed the utility requirement. See In re
Fisher, 421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005). The Fisher court held that
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007