Appeal No. 94-2232
Application 07/888,367
the issues and applicable precedent, and at least minimal
prosecution overall. Our review of the merits of the
rejections of Claims 8, 10(8) and 11(8) on appeal based on the
present record would be premature and resemble an academic
rather than a judicial endeavor. Moreover, the scope of cDNA
encompassed by the phrase “derived from the cDNA shown in
Figure 2" (Claim 8) may render the holding and opinion
expressed in In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) far more relevant to this appeal than
they were to co-pending Appeal No. 94-2156. If material to
the issues of this appeal, the views expressed in Bell should
of necessity be considered in light of newly decided In re
Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995) and
Ex parte Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int.
1995).
Accordingly, we vacate the examiner’s rejection of Claims
8, 10(8), and 11(8) under 35 U.S.C. § 103 in view of the
teachings of Walujono, Broekaert, Weissman and White and
remand the case to the examiner to ascertain exactly what the
phrase “wherein the cDNA is derived from the cDNA shown in
Figure 2 which detects the presence of the hevein peptide
10
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