Appeal 2007-1068
Application 10/015,394
used to provide a well-defined and particular benefit to the public.” Id. The
Examiner bears the initial burden of showing that a claimed invention lacks
patentable utility. See In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436,
1441 (Fed. Cir. 1995).
The present claims are directed to antibodies specific for PRO1760.
According to Appellants, the “utility of the claimed antibodies that bind
PRO1760 is based upon the results of the adipocyte glucose/FFA uptake
assay for the PRO1760 polypeptide” (Brief 4).
In the present case, no relationship between PRO1760 and any other
known protein is disclosed. However, PRO1760 was one of several PRO
polypeptides identified as a glucose or FFA uptake inhibitor in a glucose or
FFA uptake assay in primary rat adipocytes (Specification 511: 34 to 512:
10). According to the Specification, any PRO polypeptide testing positive in
the glucose or FFA uptake assay “would be expected to be useful for the
therapeutic treatment of disorders where either the stimulation or inhibition
of glucose uptake by adipocytes would be beneficial including, for example,
obesity, diabetes or hyper- or hypo-insulinemia” (id.). Finally, the
Specification teaches that antibodies to PRO polypeptides may be used as
affinity purification reagents (id. at 380: 15-21); diagnostic reagents (id. at
380: 1-13); and antagonists of PRO polypeptides (id. at 371: 27-30).
The Examiner found that the mere identification of PRO1760 as an
inhibitor of glucose- and/or free fatty acid-uptake is not sufficient to
establish “a credible, specific and substantial asserted utility or a well
established utility” for the polypeptide, or by extension, the antibody that
specifically binds it (Answer 3). The Examiner acknowledges that
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