Appeal No. 2006-3253 Page 7
Application No. 10/276,547
Appellant argues the Geerts declaration2 and the Soga reference3 provide “data
[that] confirms the specification’s teaching of the protein’s utility: ‘Diabetes also can be
potentially treated by regulating the activity of human DA-like GPCR.’” Appeal Brief,
page 5 (quoting the specification at page 51, lines 28-29). Specifically, Appellant points
to the declaration and the reference as evidence that compounds that bind the protein
of SEQ ID NO:2 would potentially be useful in treating diabetes.
We do not agree with Appellant’s position. The Geerts declaration provides
tissue-specific expression data similar to that of the specification’s Table 1. ¶ 9 and
Exhibit 1. The data in the Geerts declaration show relative expression levels in different
tissue samples. The relative level of expression in pancreas is 138. Exhibit 1, page 3.
Equal or higher expression levels are shown for 47 of the 136 tissue samples tested.
Id., pages 1-6. Ten of the tissue samples showed relative expression levels of over
1000. Id. The declarant concludes that “[t]he data show high expression levels in
pancreas. This differential expression in pancreas makes the target protein useful for
screening compounds for the treatment of diabetes.” ¶ 9.
While declaratory evidence as to issues of fact is entitled to substantial weight,
In re Alton, 76 F.3d 1168, 37 USPQ2d 1578 (Fed. Cir. 1996), “[a]n expert opinion is no
better than the soundness of the reasons supporting it.” Perreira v. Secretary of the
Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994). In this case, the declarant provided
no scientific basis for his conclusion that a relative expression level of 138, lower than
46 of the 136 tested samples, means that the protein of SEQ ID NO:2 is “useful for
2 Declaration of Andreas Geerts submitted under 37 CFR § 1.132, filed April 21, 2005.
3 Soga et al., “Lysophosphatidylcholine enhances glucose-dependent insulin secretion via an orphan G-
protein-coupled receptor,” Biochem. Biophys. Res. Comm., Vol. 326, pp. 744-751 (2005).
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