Ex Parte Baker et al - Page 4

              Appeal No. 2007-0057                                                                  
              Application No. 10/174,586                                                            

                    30.  An isolated polypeptide comprising:                                        
                    (a)  the amino acid sequence of the polypeptide of SEQ ID NO: 32;               
                    (b)  the amino acid sequence of the polypeptide of SEQ ID NO: 32,               
              lacking its associated signal peptide; or                                             
                    (c)  the amino acid sequence of the polypeptide encoded by the full-            
              length coding sequence of the cDNA deposited under ATCC accession                     
              number 209392.                                                                        
                    Claim 25 is directed to an isolated polypeptide at least 80% identical          
              in sequence to, among other things, SEQ ID NO:32 and having thioredoxin               
              protein activity.  Claims 26, 27, 28, and 29 are independent claims that are          
              identical to claim 25 except that they are directed to polypeptides 85%, 90%,         
              95%, and 99% identical, respectively, to SEQ ID NO:32 and having                      
              thioredoxin activity.                                                                 
                    Claim 30, the last independent claim, is directed to a polypeptide              
              comprising SEQ ID NO:32, SEQ ID NO:32 minus its signal sequence, or the               
              sequence encoded by the PRO270 cDNA deposited at the American Type                    
              Culture Collection.                                                                   
              2.  UTILITY                                                                           
                    Claims 25-32 and 35-37 stand rejected under 35 U.S.C. §§ 101 and                
              112, first paragraph, as lacking patentable utility.  The Examiner argues that        
              the disclosed similarity between PRO270 and thioredoxin is not enough, by             
              itself, to establish PRO270’s utility:                                                
                    [T]he mere identification that a protein belongs to a family of                 
                    proteins,  while  indicative  of  evolutionary  relatedness,  is  not           
                    indicative of function, nor by extension of utility. . . . [W]ithout            
                    any information as to the specific properties of the protein, the               
                    mere identification of such as having homology to thioredoxin                   



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