Appeal 2004-1103
Application 09/733,387
According to appellants (Request, page 2, emphasis removed),
[g]iven the scientific evidence of record, there can be no question
that those skilled in the art would clearly believe that [a]ppellants’
sequence is a functional protein, as opposed to the assertion by the
[e]xaminer that “there is no sufficient and credible information that
indicates the published sequence is truly function GPCR” . . . .
In support of this assertion, appellants’ Request raises five points which
appellants believe the Board failed to consider in reaching its Decision. Id. We
will take each in turn.
1. Appellants assert (id., emphasis removed) that “[s]equences sharing
between 90-100% percent identity at the protein level over the entire length of
the claimed sequence are present in the leading scientific repository for biological
sequence data (GenBank).” We note, however, that simply demonstrating that
sequences sharing some degree of identify with appellants’ disclosed sequence
are known in GenBank does nothing to establish a utility for the invention of claim
1. Accordingly, without more, we are not persuaded by this argument.
2. Apparently, recognizing that the GenBank sequence data alone is
insufficient to establish a utility for the invention of claim 1, appellants direct
attention to five post-filing date references (see Brief, Exhibits A-E). Request,
page 2. According to appellants (id.), these references demonstrate that “third
party scientists” annotated the GenBank sequences as G protein-coupled
receptors.
While we would agree that post-filing date references can be used as
evidence of the level of ordinary skill in the art at the time of the application,2
appellants have not demonstrated that at the time of appellants’ claimed
invention a person of ordinary skill in the art would have recognized that these
GenBank sequences demonstrate that appellants’ claimed sequence is a
functional G protein-coupled receptor. At best, appellants have demonstrated
that after their filing date, sequences with some degree of similarity to their own
2 In re Hogan, 559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977) (“This court has approved
use of later publications as evidence of the state of the art existing on the filing date of an
application.” (footnote omitted)).
2
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013