LERNER et al. V. LERNER et al. V. WINTER et al. - Page 3




          Interference No. 104,272                             Paper No. 56           
          Lerner v. Lerner v. Winter                                 Page 3           
          type of vector contains a polynucleotide sequence having a                  
          restriction endonuclease recognition site upstream to the                   
          translation initiation site.  Restriction endonuclease is                   
          added to cleave the polynucleotides at the recognition site                 
          and to leave ligation compatible ends.  Thereafter the                      
          polynucleotides from the two different types of vectors are                 
          ligated to form the coexpression vectors.  In the '762                      
          application, the coexpression vectors are synthesized by a                  
          similar method, but the '762 process includes only a generic                
          step of joining the two different types of polynucleotide                   
          sequences.  There is nothing in the record to indicate that                 
          one skilled in the art would have been motivated to select the              
          specific method of joining the two different polynucleotides                
          as claimed by the '761 application in view of the '762 claims.              
          Therefore the '761 claims are not anticipated or obvious in                 
          view of the '762 claims.                                                    
               In the '762 application, generic claims 32, 45, 59, 71,                
          80, and 90 are directed to the production of polynucleotides                
          and vectors containing such polynucleotides where the                       
          polynucleotides and vectors are capable of expressing the                   
          variable regions of the light (V ) and heavy (V ) chains ofL             H                            
          antibody molecules.  Generic claims 17 and 31 of the '761                   
          application are directed to the production of vectors                       





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