Appeal No. 94-3919
Application 08/391,550
developed in the parent application, the prior merits panel affirmed the rejection under 35
U.S.C. § 101 of claim 15 as it then read.
In considering the issues raised in this appeal, this merits panel discovered U.S.
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Patent No. 5,571,689 ('689 patent). The '689 patent lists four co-inventors including the
present three co-inventors. Claim 1 of the '689 patent reads as follows:
1. A method of acylating a peptide or protein at an amino terminal glycine residue
of said peptide or protein with an analog of myristic acid to form a N-myristoyl analog
peptide or protein comprising reacting said peptide or protein with N-myristoyltransferase
and an enzyme substrate consisting of the CoA ester of a diheteroatom-substituted fatty
acid analog of myristic acid selected from the group consisting of C and C fatty acids, 13 14
in which two non-adjacent methylene groups of said analogs which are normally in
positions from 3 to 13 are replaced by oxygen or sulfur to reduce the hydrophobicity of said
myristic acid analog.
Claim 15 of this application and claim 1 of the '689 patent differ most significantly in that
claim 15 of this application requires the use of a monoheteroatom-substituted fatty acid
analog of myristic acid while claim 1 of the '689 patent requires the use of a diheteroatom-
substituted fatty acid analog of myristic acid.
The issuance of the '689 patent changes the factual background against which the
utility of the method of claim 15 on appeal must be determined. Since the record has
significantly changed from that considered by the prior merits panel in the previous appeal
and the examiner in considering the issue in this application, we VACATE the examiner's
2A copy of the ‘689 patent is attached to this opinion.
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Last modified: November 3, 2007