Ex Parte NILSEN et al - Page 3




              Appeal No. 2003-1792                                                                                     
              Application No. 09/434,598                                                                               
                     We do not find that appellant’s claim grouping conforms with Rule 1.192.  While                   
              appellants have grouped claims 34 and 35 separately from claim 37 (Brief, page 4),                       
              they have not presented separate argument as to why claims 34 and 35 are patentable                      
              in view of the cited art.   Since the individual claims of each group are not argued, we                 
              decide this appeal with respect to the prior art rejections on the basis of claim 37, as                 
              representative of Group I, and  claim 36, as representative of Group II. Thus, claims 34                 
              and 35 fall with claim 37.   37 CFR §1.192(c)(7) (2002).                                                 
                                                    DISCUSSION                                                         
              Background                                                                                               
                     The claimed invention is directed to a set of affector oligomers for specifically                 
              reducing the expression of an RNA molecule of interest.  Affector RNA molecules                          
              include ribozymes, external guide sequences, anti-sense RNA and triple helix forming                     
              RNA that inhibit expression of target RNA molecules.  Specification, page 1.                             
                     Disclosed in the specification is a method of identifying affector molecules by                   
              screening or selecting for those RNA molecules that alter the expression of a fusion                     
              transcript which includes the sequence of an RNA molecule of interest, from a library of                 
              potential affector RNA molecules.  Specification, page 8.  Inhibition of expression of the               
              fusion transcript prevents expression of the reporter protein.  This allows inhibition of                
              expression to be monitored by detecting expression of the reporter protein.  Id.  The                    
              inhibition of expression is accomplished by interaction of a nucleic acid molecule                       
              involved in the expression of the RNA molecule of interest with an affector molecule.                    

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