Appeal No. 2007-0057
Application No. 10/174,586
redox regulating activities. Therefore, those activities cannot be relied on as
a basis for PRO270’s patentable utility.
Appellants have asserted no utility for PRO270 that is not based on
electron transfer and redox regulation. Since the evidence shows that
PRO270 is unlikely to exhibit those activities, we agree with the Examiner
that the specification does not disclose a patentable utility for the claimed
polypeptides. The rejections of claims 25-32 and 35-37 under 35 U.S.C.
§§ 101 and 112, first paragraph, for lack of utility are affirmed.
3. WRITTEN DESCRIPTION
Claims 25-32 and 35-37 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking an adequate written description in the specification.
The Examiner reasons that the specification does not adequately describe the
claimed genus of polypeptides at least 80% similar to SEQ ID NO:32 and
possessing thioredoxin protein activity, because the specification discloses
only a single polypeptide and does not demonstrate that it “actually
possesses the ability to affect reduction-oxidation activity.” Examiner’s
Answer, pages 6-7.
We agree with the Examiner’s reasoning and conclusion. Claim 25,
which is representative of the claims rejected for inadequate written
description, is directed to the genus of polypeptides that are at least 80%
identical to SEQ ID NO:32 and that have thioredoxin protein activity.
However, for the reasons discussed above, the evidence of record shows that
PRO270 itself (i.e., SEQ ID NO:32) is unlikely to have the activity of
thioredoxin. The specification does not describe any variants of SEQ ID
NO:32 that would be expected to possess an activity that is not possessed by
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