Ex Parte COOK et al - Page 2



            Appeal No. 2002-0798                                                          Page 2              
            Application No. 09/107,688                                                                        

            its chemical or electrochemical properties.  The transformed scaffold moiety is then              
            reacted with a further mixture of chemical reactive compounds to provide a library.               
                   Claim 13, which is illustrative of the subject matter on appeal, reads as follows:         
                   13.  A method for preparing a chemical library comprising:                                 
                   reacting a mixture of at least four chemical reactive compounds with at least one          
            scaffold moiety to provide a mixture of reaction products;                                        
                   transforming said scaffold moiety in said reaction products to alter at least one of       
            its chemical or electrochemical properties and;                                                   
                   reacting said transformed scaffold moiety in said products with a further mixture          
            of at least four chemical reactive compounds to provide said library.                             
            (Emphasis added).                                                                                 


                                           The Prior Art References                                           
                   The prior art references relied on by the examiner are:                                    
            Rutter et al. (Rutter)           5,010,175          Apr. 23, 1991                                 
            Joran                            5,364,851          Nov. 15, 1994                                 
            Baindur et al. (Baindur)         5,646,285          Jul.    8, 1997                               
            Ostresh et al. (Ostresh), "'Libraries from libraries': Chemical Transformation of                 
            Combinatorial Libraries to Extend the Range and Repertoire of Chemical Diversity,"                
            Proc. Nat'l Acad. Sci. USA, Vol. 91, pp. 11138-42 (Nov. 1994)                                     

                                               The Rejections                                                 
                   The appealed claims stand rejected as follows: (1) claims 13, 23, and 26 under             
            35 U.S.C. § 102(b) as described by Rutter; (2) claims 13 and 23 through 26 under 35               
            U.S.C. § 103(a) as unpatentable over the combined disclosures of Rutter, Baindur, and             
            Ostresh; (3) claims 13, 23, 26, and 30 under 35 U.S.C. § 103(a) as unpatentable over              






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