Appeal No. 2007-0079 Page 4
Application No. 10/159,749
artisan conclude that there is an existing correlation between the claimed
structure (any deletion mutant) and the function of providing bone morphogen
antagonizing and binding activity.”
In support of his position, the examiner finds (Id.), Skolnick teaches that
“binding and receptor function cannot be reliably predicted from protein sequence
homology. . . .” In addition, the examiner finds that Vukicevic teaches that the
OP-1 family of TGF-beta “induces metanephrogenesis whereas closely related
TGF-beta family members-BMP-2 and TGF-beta1-have no effect on
metanephrogenesis under identical conditions. . . .” Id. Similarly, the examiner
finds that Tischer teaches that VEGF a member of the PDGF family exhibits
different activity than PDGF; and that Kopchick teach that a 198 amino acid
vertebrate growth hormone “becomes an antagonist (inhibitor of growth) when a
single amino acid is changed. . . . Even 99% homology does not allow
predictability in this instance.” Answer, page 7. Based on this evidence the
examiner concludes (Id.),
[g]iven the unpredictability of homology comparisons, and the fact
that the specification fails to provide objective evidence that any
deletion mutant, comprising only 8 contiguous amino acids or
otherwise, would provide for binding and antagonism of bone
morphogen growth, it cannot be established that a representative
number of species have been disclosed to support the genus
claim[ed]. There is no correlation or nexus provided between
possession of any deletion mutant and the functional features of
bone morphogen antagonizing activity and binding such that it is
clearly conveyed that possession of any deletion mutant would
reliably and predictably possess these functional features.
We are not persuaded by the examiner’s argument. First, unlike the
situation in Vukicevic and Tischer, the claims before us on appeal are directed to
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