Ex Parte Baker et al - Page 3

                Appeal No. 2007-0311                                                                            
                Application No. 10/175,744                                                                      

                       prokaryotic cell. (See also, U. S. Patent Nos. 5,700,659 and                             
                       5,700,678).                                                                              
                       Thus,  PDI  and  molecules  related  thereto  are  of  interest,                         
                       particularly for ability to catalyze the formation of disulfide                          
                       bonds. Moreover, these molecules are generally of interest in                            
                       the study of redox reactions and related processes. PDI and                              
                       related  molecules  are  further described  in  Darby,  et  al.,                         
                       Biochemistry 34, 11725-11735 (1995).  We herein describe the                             
                       identification and characterization of novel polypeptides having                         
                       homology to protein disulfide isomerase, designated herein as                            
                       PRO700 polypeptides.                                                                     
                Page 9.                                                                                         
                                                DISCUSSION                                                      
                1.  CLAIMS                                                                                      
                       Claims 25-29 are pending and on appeal.  The claims have not been                        
                argued separately and therefore stand or fall together.  37 CFR                                 
                § 41.37(c)(1)(vii).  Claim 25 is the only independent claim and reads as                        
                follows:                                                                                        
                       25. An isolated antibody that binds specifically to the polypeptide                      
                of SEQ ID NO: 74.                                                                               
                2.  UTILITY                                                                                     
                       Claims 25-29 stand rejected under 35 U.S.C. §§ 101 and 112, first                        
                paragraph, as lacking patentable utility.  The Examiner argues that “[t]he                      
                instant specification and the prior art do not teach how the polypeptide of                     
                SEQ ID NO:74 functions or a specific and well-established utility for the                       
                polypeptide of SEQ ID NO:74 or antibodies that specifically bind said                           
                polypeptide” (Answer 4).                                                                        


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