Appeal 2007-2517
Application 10/311,196
Specification does not assert that SEQ ID NO: 5 is the human olfactory
receptor P2, instead characterizing it in the more detailed description as a G-
protein coupled receptor (Answer 11; Spec. 26: 8-12). “This hardly rises to
the level of an assertion that a specific sequence presented in Table 2 has the
same function as the closest known Gen[ ]bank homolog and certainly does
not constitute a disclosure of a specific and substantial utility for a protein
comprising any one of those sequences” (Answer 11-12).
We agree with the Examiner that the disclosure in the Specification
that SEQ ID NO: 2 is a GenBank homolog of mouse taste receptor T1R3 –
based only on a probability score – does not constitute an assertion of utility
for the purpose of meeting the statutory requirement of 35 U.S.C. § 101.
The Examiner’s point that, while SEQ ID NO: 5 is listed in Table 2 as the
GenBank homolog of olfactory receptor P2, the Specification chooses to
describe it as a GPCR (Spec. 26: 8-12), raises doubt that the only
“reasonable interpretation” of Table 2 (Br. 8) is that it communicates the
utility/functional activity of the disclosed sequences. If this were so, we
agree with the Examiner’s logic that the Specification should have
characterized SEQ ID NO: 5 as the human olfactory receptor P2, rather than
generically as a GPCR.
In addition, there is no evidence in the record that the BLAST
probability score is a measure of sequence identity or sequence similarity
that would have led persons of skill in the art to reasonably believe that a
high probability score is indicative of a functional activity. According to the
Specification, “[t]he BLAST probability score . . . indicates the probability
of obtaining the observed polypeptide sequence alignment by chance” (Spec.
25: 35 to 26: 1-2); it does not assert to be a measure of how much sequence
5
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