Ex Parte DORSCHUG et al - Page 2


                   Appeal No. 2001-1586                                                                                      Page 2                                  
                   Application No. 08/402,394                                                                                                                           

                             Claim 33 and 42 are representative of the subject matter on appeal and reads as                                                            
                   follows:1                                                                                                                                            
                   33.       A compound of the formula I                                                                                                                
                                                 B(1-30)-Arg-A(1-21)                                                                                                    
                                       (I)                                                                                                                              
                   wherein A(1-21) and B(1-30) denote the A and B chains of human insulin.                                                                              


                   42.       A method for the preparation of a mono-Arg-insulin compound of the formula II                                                              
                                                                     S – S                                                                                              
                                                                     |       |                                                                                          
                                                           A(1 – 21)                                                                                                    
                                                                     |       |                                                                                          
                                                                     S – S                                                                                              
                                                                     |       |                                       (II)                                              
                                                                     S – S                                                                                              
                                                                     |       |                                                                                          
                                                           B(1 – 30)-Arg                                                                                                
                   in which A(1-21) and B(1-30) denote the A and B chains of human insulin and the –S-S-                                                                
                   bridges are positioned as in insulin, which comprises:                                                                                               
                             (a)       expressing a DNA sequence encoding a mini-proinsulin compound of the                                                             
                   formula:                                                                                                                                             
                                                           B(1-30)-Arg-A(1-31)                                                                                          
                   in a yeast; and                                                                                                                                      
                             (b)       cleaving said mini-proinsulin compound with trypsin.                                                                             
                             The references relied upon by the examiner are:                                                                                            
                   Mai et al. (Mai)                                           5,087,564                             Feb. 11, 1992                                     
                   Markussen et al. (Markussen ‘212)                           4,916,212                             Apr. 10, 1990                                     
                   Grau (Grau ‘684)                                           4,801,684                             Jan. 31, 1989                                     
                   Grau (Grau ‘332)                                           4,639,332                             Jan 27, 1987                                      

                                                                                                                                                                        
                   1 We note that claim 42(a) requires the use of the compound B(1-30)-Arg-A(1-31) instead of B(1-30)-Arg-                                              
                   A(1-21).  We view “A(1-31)” in the claim to be a typographical error as all references to this compound in                                           
                   the original disclosure of this application state that the A chain is depicted as “A(1-21).”  Claim 21 also                                          
                   contains this apparent error.  Our consideration of the issues raised in this appeal has been based upon                                             
                   claim 42(a) requiring the use of the compound B(1-30)-Arg-A(1-21).  Note counsel’s statement at page 8                                               
                   of the Appeal Brief “the common subject matter to every pending claim is the compound of formula                                                     
                   B(1-30)-Arg-A(1-21).”                                                                                                                                






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