Ex parte GRANADOS - Page 2


                  Appeal No. 1997-3116                                                                                     
                  Application 08/294,953                                                                                   


                         The examiner relies on the following references:                                                  
                         Granados              5,298,418            Mar. 29, 1994                                          
                         Granados              5,300,435            Apr. 05, 1994                                          
                         Wickham et al. (Wickham), “Screening of Insect Cell Lines for the                                 
                  Production of Recombinant Proteins and Infectious Virus in the Baculovirus                               
                  Expression System,”  Biotechnol. Prog., Vol. 8, pp 391-396 (1992)                                        
                         Stiles et al. (Stiles),  “Initiation and Characterization of Five Embryonic Cell                  
                  Lines From The Cotton Boll Weevil Anthonomus Grandis In a Commercial                                     
                  Serum-Free Medium,” In Vitro Cell. Dev. Biol., Vol. 28A, pp 355-363 (1992)                               

                         Claims 1-8 stand rejected under 35 U.S.C. § 103 over the combination of                           
                  Stiles and Granados (‘435).                                                                              
                         Claims 9 and 10 stand rejected under 35 U.S.C. § 103 over the                                     
                  combination of Granados (‘418) and Wickham.                                                              
                         We reverse the rejection of claims 1-8, affirm the rejection of claims 9 and                      
                  10, and enter a new ground of rejection under 37 CFR § 1.196(b).                                         
                                                       Background                                                          
                         As disclosed by Appellant’s specification, insect cell lines have been used                       
                  to produce many different recombinant products.  See pages 1-2.  The                                     
                  specification also discloses that use of serum -free medium is important for large-                      
                  scale production using insect cells because it is cheaper and contains fewer                             
                  extraneous proteins to get rid of during later purification steps.  Page 2.  Finally,                    
                  the specification discloses that an insect cell line had been established in serum-                      
                  free medium but asserts that those skilled in the art believed that other insect cell                    
                  lines had to be established in serum -containing medium and later adapted to                             


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