Appeal No. 2006-3253 Page 8
Application No. 10/276,547
screening compounds for the treatment of diabetes.” No such reason is apparent to us:
the expression level in pancreas does not seem unusually high compared to many of
the other tested samples, and even if the protein had been overexpressed in pancreas,
pancreas-specific expression does not necessarily mean the protein is involved in
diabetes. The conclusion of the Geerts declaration is not supported by the evidence or
by sound scientific reasoning; therefore, we do not find it credible.
Appellant also cites the Soga reference as evidence that the protein of SEQ ID
NO:2 is involved in diabetes. Appellant notes that Soga teaches that a protein called
GPR119 is expressed in pancreas and involved in glucose-dependent insulin secretion.
See the Appeal Brief, page 6. According to Appellant, human GPR119 and the protein
of SEQ ID NO:2 have identical amino acid sequences. See id., paragraph bridging
pages 5 and 6. Thus, Appellant asserts, “Soga is strong evidence that one skilled in the
art would find credible the specification’s asserted utility for the recited protein.” Id.,
page 7.
Soga was published in 2005. The instant application claims an effective filing
date of May 18, 2000. “Enablement, or utility, is determined as of the application filing
date.” In re Brana, 51 F.3d 1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19 (Fed. Cir.
1995). Appellant has provided no evidence to show that the evidence disclosed by
Soga in 2005 was available to those skilled in the art as of May 18, 2000. Therefore,
Soga’s statement that GPR119 “is a potential target for anti-diabetic drug development”
cannot be relied on to show the utility of the protein of SEQ ID NO:2.
Appellant argues, however, that Soga is being relied on merely as evidence
supporting the utility asserted in the specification as filed. See the Appeal Brief, page 7
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