Appeal No. 2006-3253 Page 12
Application No. 10/276,547
Most relevant here is the Langer court’s treatment of the references cited by the
examiner. The court noted that the examiner’s references were not cited as “prior art”
and, in fact, many had been published after the effective filing date of the application.
The court nonetheless held that the “references [we]re properly cited for the purpose of
showing a fact under the principle of In re Wilson, . . . 311 F.2d 266, 135 USPQ 442
([CCPA] 1962).” Id. at 1391, 183 USPQ at 296-97.
The claims in Wilson defined a method of making polyurethane foam: the
applicants claimed that a foam with an open cell structure could be formed by
combining all the required components except water and allowing them to react for at
least thirty seconds before adding the water. Wilson, 311 F.2d at 267, 135 USPQ at
443. The examiner cited a reference (“the DuPont publication”) as evidence that an
open cell structure was a normal characteristic of polyurethane foams. See id. at 268,
135 USPQ at 444. The court concluded that “the publication was properly cited to show
a state of fact. . . . As evidence of the characteristics of prior art foam products, . . . we
know of no reason in law why it is not acceptable.” Id. at 268, 135 USPQ at 444.
Here, by comparison, the specification discloses the following characteristics of
the human DA-like GPCR used in the claimed method: (1) it has the amino acid
sequence shown in SEQ ID NO:2; (2) it is “30% identical over 350 amino acids to the D.
melanogaster protein . . . annotated as a dopamine 1 receptor precursor” (specification,
page 10); and (3) it has the tissue-specific expression pattern shown in Table 1.
The examiner has not disputed any of these factual assertions, and Appellant
does not rely on the post-filing evidence to prove any of these facts. Rather, Appellant
relies on the post-filing evidence to further characterize the protein of SEQ ID NO:2:
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