Appeal No. 95-0083
Application 07/711,556
appeal. Claim 43 and the claims dependent therefrom require that the polypeptide of
interest be expressed in and secreted by the host cell. Claim 54 and the claims
dependent therefrom do not require that the polypeptide be secreted. Both appellants
and the examiner appear to have overlooked this salient point in presenting arguments
before the board.
The face of the file wrapper indicates that this application is derived from a series
of continuation applications. On return of this application to the examining corps, the
examiner should determine (1) whether each parent application is correctly
denominated a continuation of the immediately preceding application; or (2) whether
any of the parent applications should be denominated a continuation-in-part of its
immediately preceding application. Merely by way of example, parent application Serial
No. 06/572,414, now U.S. Patent No. 4,859,596 does not appear to contain the same
set of figures or the same written description compared with the instant application.
If the examiner determines that any of the parent applications should be
denominated a continuation-in-part of its preceding application, we recommend that the
examiner engage in a claim by claim analysis to ascertain the effective filing date of
each claim in this application. Ascertaining the effective filing date of each claim would
be a crucial first step in reassessing patentability of the appealed claims under 35
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