Appeal 2007-1149
Application 10/066,273
3. UTILITY
Claims 40-44 stand rejected under 35 U.S.C. § 101 as lacking
patentable utility. The Examiner argues that the “application has provided a
description of an isolated protein and an antibody to this protein,” but that it
“does not disclose a specific biological role for the[] protein and antibody or
their significance to a particular disease, disorder or physiological process,
which one would wish to manipulate for a desired clinical effect”
(Answer 3).
The Examiner acknowledges that the Specification states that anti-
PRO antibodies are “useful for the affinity purification of PRO,” but argues
that, “because at the time of filing of the instant application the specific and
substantial credible utility of the PRO444 polypeptide[] was not established,
there appears to be no pressing practical need to use the claimed antibodies
to isolate PRO444” (id. at 5-6). Rather, “[t]o use an antibody to polypeptide
PRO444 of the instant invention in any of the disclosed methods would
clearly be using it as the object of further research” (id. at 6).
Appellants argue that “the claimed antibodies are useful in the
purification of PRO444 polypeptides, which in turn have utility . . . as
stimulators of angiogenesis” (Br. 7). Appellants cite the results shown in the
Specification’s Example 60, which states that PRO444 “act[s] to induce the
expression of c-fos in pericyte cells,” and that “[i]nduction of c-fos
expression in pericytes is . . . indicative of the induction of angiogenesis and,
as such, PRO polypeptides capable of inducing the expression of c-fos
would be expected to be useful for the treatment of conditions where
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