Appeal No. 2006-3253 Page 13
Application No. 10/276,547
• “Soga . . . teaches a murine GPCR, ‘GPR119.’ . . . [T]he amino acid sequence
of human GPR119 . . . is 100% identical to the amino acid sequence of SEQ ID
NO:2” (Appeal Brief, pages 5-6);
• “Soga teaches that mouse GPR119 polynucleotide, like the polynucleotide that
encodes SEQ ID NO:2, is expressed in the pancreas” (Appeal Brief, page 6);
• “Soga teaches that GPR119 is involved in glucose-dependent insulin
secretion. . . . Soga suggests that, because GPR119 is involved in glucose-
dependent insulin secretion . . . it is a likely target for diabetes therapy”
(Appeal Brief, page 6).
The instant specification does not disclose that the protein of SEQ ID NO:2 is
similar to a murine protein (GPR119) that is involved in glucose-dependent insulin
secretion. Nor does the specification disclose the tissue-specific expression pattern
shown in Soga’s Figure 4: Soga shows that GPR119 is expressed in pancreas at a
level at least five times higher than in any tissue tested, and not expressed at all in
uterus (Fig. 4A). The instant specification’s Table 1, by contrast, shows that the protein
of SEQ ID NO:2 is expressed abundantly in spleen, stomach, small intestine, and
skeletal muscle, as well as pancreas, and is expressed in uterus at a level over ten
times as high as in pancreas.
Appellant is not citing Soga “as evidence of the state of the art existing on the
filing date of an application,” In re Hogan, 559 F.2d at 605, 194 USPQ at 537, but for its
disclosure of knowledge that became available to those skilled in the art only after the
filing date of the instant application. Appellant seeks to rely on the later-published
reference in order to bolster the evidence that SEQ ID NO:2 is likely to be useful in
identifying diabetes treatments. A later-published reference cannot be relied on for
such a purpose:
It is an applicant’s obligation to supply enabling disclosure without reliance
on what others may publish after he has filed an application on what is
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