Appeal 2007-3881
Application 09/833,782
utility of animal neurolysins was already known before the instant
application was filed” (id. at 18).
However, the Examiner concluded that the established utility of
animal neurolysins cannot be imputed to the protein of SEQ ID NO: 2
because Appellants “do not assert the function of the encoded protein as
being that of neurolysin. Nowhere in the specification is there any statement
that suggests that the disclosed protein shares functional similarity to
mammalian neurolysins.” (Id. at 9.) The Examiner cites several references
in support of her position that “the state of the art clearly teaches the
unpredictability of assigning function based on sequence homology and
acknowledges that small changes in amino acid sequence can drastically
change function” (id. at 10).
Appellants argue that the “biological significance and function of
neurolysin and neurolysin like metalloproteases are well known to those of
skill in the art” (Br. 6, citing Kato et al., J. Biol. Chem. 272: 15313-15322
(1997)).1 Appellants assert that “a sequence that is identical at the amino
acid level over the entire length of the described sequence” has been
deposited in GenBank and annotated (by others) as human neurolysin (Br. 4-
5). Appellants conclude that “[t]herefore, it is clear that the amino acid
sequence of SEQ ID NO: 2 encodes [sic] human neurolysin” (id. at 5).
1 Appellants also cite two other references in support of the quoted
statement, but the other references were published after the effective filing
date of the instant application and therefore cannot be relied on to show the
state of the art at the time the invention was made. “Enablement, or utility,
is determined as of the application filing date.” In re Brana, 51 F.3d 1560,
1567 n.19 (Fed. Cir. 1995).
3
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