BARBACID et al. V. BROWN et al. - Page 3




               Interference No. 103,586                                                                                              

                                                                OR                                                                   


                       An assay for identifying compounds that inhibit ras oncogene activity, comprising:                            
                       (a) reacting a protein or peptide substrate having a CAAX motif with farnesyl                                 
               pyrophosphate and farnesyl-protein transferase in the presence of a test substance, and                               
                       (b) detecting whether the farnesyl residue is incorporated into the protein or peptide                        
               substrate, in which the ability of the test substance to inhibit ras oncogene activity is                             
               indicated by a decrease in the incorporation of the farnesyl residue into the protein or                              
               peptide substrate as compared to the amount of the farnesyl residue incorporated into the                             
               protein or peptide substrate in the absence of the test substance.                                                    
                       Barbacid claims 1-19 and Brown claims 37, 39, 41, 42, 53, 54, 57, 58 and 60                                   
               correspond to the count.                                                                                              
                       During the preliminary motion stage of this proceeding, Barbacid filed a motion for                           
               judgment (Barbacid Motion No. 1) against Brown on the grounds that the Brown claims are                               
               unpatentable under 35 U.S.C. § 135(b), which motion was denied.  Brown filed a motion                                 
               for judgment (Brown Motion No. 1) against Barbacid that Barbacid claims are                                           
               unpatentable under 35 U.S.C. § 112, first paragraph for lack of best mode, which motion                               
               was denied.  Lastly, Brown filed motion No. 5 pursuant to 37 C.F.R. § 1.633(c)(2) to                                  
               amend claims 37, 39 and 54 and to add claims 57-60 and Motion No. 6 pursuant to 37                                    
               C.F.R. § 1.633(c)(3) to designate Barbacid claims 7, 14, and 17-19 as corresponding to                                
               the count.  Brown motion 6 was granted, and Brown Motion 5 was granted-in-part to add                                 
               claims 57-58 and 60 to the Brown application and designate them as corresponding to the                               



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