Appeal 2007-1139
Application 10/052,664
We agree with Appellants that the Examiner has not provided a
sufficient basis to challenge the Specification’s assertion of utility, and the
rejection is reversed.
The Examiner asserts, relying on Bork (Nature Genetics), Karp, and
Bork (Current Opinion in Structural Biology) that the “utility of the claimed
protein cannot be implicated solely from the homology to the proteins
known in the art because the art does not provide a teaching stating that all
protein disclosed have the same activity, same effects, the same ligands and
or are involved in the same disease states.” (Answer 5.)
Bork (Nature Genetics), according to the Examiner, “provides a
review disclosing the problems of using homology detection methods to
assign function to related members of a family.” (Answer 7.) Bork (Nature
Genetics) is also cited by the Examiner for teaching that while the function
of a protein may be identified using homology, the prediction of substrate
specificity “is unwarranted.” (Id. at 8) Karp and Bork (Current Opinion in
Structural Biology) also discuss the problems of using analysis of sequence
homology to predict function (id. at 8-9). The Examiner concludes that the
references “disclose the unpredictability of assigning a function to a
particular protein based on homology, especially one that belongs to the
family sodium phosphate co-transporter which has very different ligand
specificity and functions.” (Id. at 9.)
First, the above references relate to the issues of assigning function
using sequence homology generally, and are not specific to the family of
sodium phosphate co-transporters. The references in fact support that it is
not an absolute, per se, rule, that in every factual circumstance sequence
homology cannot be used to predict function. Thus, the references do not
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