BARBACID et al. V. BROWN et al. - Page 2




               Interference No. 103,586                                                                                              

                                                         ____________                                                                
               Before DOWNEY, WILLIAM F. SMITH and LORIN, Administrative Patent Judges.                                              
               DOWNEY, Administrative Patent Judge.                                                                                  

                       This interference involves a patent to Barbacid et al. (Barbacid), U.S. Patent No.                            
               5,185,248, assigned to E.R. Squibb and Sons, Inc., (a subsidiary of Bristol-Myers Squibb                              
               Co.) (hereinafter Squibb), and an application to Brown et al.(Brown), Serial No.                                      
               07/937,893, assigned to Board of Regents, University of Texas System, with Genentech,                                 
               Inc.,  as non-exclusive licensee of the subject matter of this application.                                           
                       The subject matter at issue is an assay for identifying a candidate/test substance                            
               having the ability to inhibit a farnesyl transferase enzyme.  The subject matter at issue is                          
               defined by a single count, which count is a bifurcated count which includes Barbacid’s                                
               patent claim 1 and Brown’s claim 37.  The count reads as follows:                                                     
               Count 1                                                                                                               
                       A method for identifying a candidate substance having the ability to inhibit a farnesyl                       
               transferase enzyme, comprising the steps of:                                                                          
                       (a) obtaining an enzyme composition comprising a farnesyl transferase enzyme that                             
               is capable of transferring a farnesyl moiety to a farnesyl acceptor substance;                                        
                       (b) admixing a candidate substance with the enzyme composition and farnesyl                                   
               pyrophosphate; and                                                                                                    
                       (c) determining the ability of the farnesyl transferase enzyme to transfer a farnesyl                         
               moiety to a farnesyl acceptor substrate in the presence of the candidate substance and in                             
               the absence of the candidate substance                                                                                


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