Appeal 2004-1103
Application 09/733,387
have been annotated as G protein-coupled receptors. Appellants have not,
however, demonstrated that their protein is a G protein-coupled receptor. For the
reasons set forth in our June 30, 2004 Decision, appellants have not established
a utility for the sequence of claim 1. Later filed publications cannot be used to
supplement an insufficient disclosure in an earlier application to render it
enabling. In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974)
(later publications which add to the knowledge of the art cannot be used to
supplement an insufficient disclosure). “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 supposed to be a completed invention. If he cannot
supply enabling information, he is not yet in a position to file.” Glass,
492 F.2d at 1232, 181 USPQ at 34. While the Glass court addressed the
enablement requirement of § 112, the same rule applies to the utility requirement
of § 101. In re Brana, 51 F.3d 1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19
(Fed. Cir. 1995).
3. Apparently, recognizing the deficiency in their argument regarding the
post-filing date references, appellants direct our attention to a murine sequence
that shares 68% identity and 78% similarity at the amino acid level of the entire
length of the sequence described in appellants’ specification and is present in
GenBank. Request, page 2. Again, sequence listings alone cannot establish a
utility for the invention of claim 1.
4. According to appellants (id.), “third party scientists” annotated the
murine sequence present in GenBank as “‘Mus musculus Pb99 [(Pb99)] gene
sequence’”. See Brief, Exhibit F. This annotation, alone, fails to establish a
utility for the invention of claim 1.
5. However, appellants assert that Sleckman3 functionally characterized
Pb99 as a G-protein coupled receptor. While Sleckman published the same year
as appellants’ filing date, we disagree with appellants that Sleckman
3 Sleckman et al. (Sleckman), “Cloning and Functional Characterization of the Early-Lymphocyte-
Specific Pb99 Gene,” Molecular and Cellular Biology, Vol. 20, No. 12, pp. 4405-4410 (2000).
Brief, Exhibit G.
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