Appeal 2007-1139
Application 10/052,664
(Id. at 2.) Peerce and Feild thus establish that there was a known specific
and substantial known utility for potassium sodium transporters that are
involved in the absorption of Pi in the intestine.
In addition, as noted by Appellants (Br. 9), the Specification teaches
that the Npt2B polypeptide may be used in the generation of antibodies that
reduce or inhibit the function of Npt2B, which antibodies may be useful as
therapeutics. Again, the Examiner has provided no evidence that one skilled
in the art would not find such a utility credible.
The Examiner’s primary concern appears to be that “[t]he claimed
transporter was not expressed in intestinal cells or any other cells to
determine its ion transport properties. The functionality of claimed
transporter is based solely on homology to other transporter polypeptides.”
(Answer 20 (emphasis added).) The Examiner’s concern, therefore, seems
to be that the disclosure as filed predicated utility and function on sequence
homology. The USPTO has, however, rejected a per se rule as to homology.
The suggestions to adopt a per se rule rejecting
homology based assertions of utility are not adopted. An
applicant is entitled to a patent to the subject matter claimed
unless statutory requirements are not met (35 U.S.C. 101, 102,
103, 112). When the USPTO denies a patent, the Office must
set forth at least a prima facie case as to why an applicant has
not met the statutory requirements. The inquiries involved in
assessing utility are fact dependent, and the determinations
must be made on the basis of scientific evidence. Reliance on
the commenters’ per se rule, rather than a fact dependent
inquiry, is impermissible because the commenters provide no
scientific evidence that homology-based assertions of utility are
inherently unbelievable or involve implausible scientific
principles. See, e.g., In re Brana, 51 F.3d 1560, 1566, 34
USPQ2d 1436, 1441 (Fed. Cir. 1995) (rejection of claims
improper where claims did ‘‘not suggest an inherently
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