Ex parte PAVLAKIS et al. - Page 3

                   Appeal No. 1995-2723                                                                                                                             
                   Application 07/858,747                                                                                                                           

                   Kunkel, "Rapid and Efficient Site-Specific Mutagenesis Without Phenotypic Selection,"                                                            
                   Proc. Natl. Acad Sci. USA, Vol. 82, pages 488-492, 1985.                                                                                         
                                                              GROUND OF REJECTION2                                                                                  

                            Claims 1-11 stand rejected under 35 U.S.C.  103.  As evidence of obviousness,                                                          
                   the examiner relies upon Schwartz, Wisdom, Kunkel and Hatfield.                                                                                  
                            We affirm the rejection.                                                                                                                

                            At page 1 of the specification, applicants describe the invention as relating to                                                        
                   methods of increasing the stability and/or utilization of mRNA produced by a gene by                                                             
                   mutating regulatory or inhibitory/instability sequences (INS) in the coding region of the                                                        
                   gene which prevent or reduce expression of the mRNA.  The invention is also said to relate                                                       
                   to constructs, including expression vectors, containing genes mutated in accordance with                                                         
                   these methods and host cells containing these constructs.  The methods are said to be                                                            
                   particularly useful for increasing the stability and/or utilization of a mRNA without changing                                                   
                   its protein coding capacity and are said to be useful for allowing or increasing the                                                             

                            2The examiner and appellants both present arguments relating to the objection to                                                        
                   the specification under 35 U.S.C.  112, first paragraph as lacking support or antecedent                                                        
                   basis in the application, as filed, for matter added by amendment to the specification.  No                                                      
                   claim is rejected on this basis.  The Board of Patent Appeals and Interferences reviews                                                          
                   adverse decisions of examiners in applications for patents (35 U.S.C.  7(b)) on appeal                                                          
                   from applicants whose claims have been twice rejected (35 U.S.C.  134).  Since no claim                                                         
                   is rejected on this ground, review of this issue is not appropriate.  Where the new matter is                                                    
                   confined to amendments to the specification, review of the examiner's requirement for                                                            
                   cancellation is by way of petition. See MPEP  608.04(c).                                                                                        

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