Ex parte PAVLAKIS et al. - Page 4

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

              expression of genes which would otherwise not be expressed or which would be poorly                             
              expressed because of the presence of INS regions in the mRNA transcript.                                        

                                                 Grouping of the Claims:                                                      
                      At page 6 of the Appellants' principal brief (Principal Brief), appellants state that the               
              claims do not stand or fall together and state that claims 6-9 and 10-11 are separately                         
              patentable. Appellants have not separately argued the claims within each group.                                 
              Therefore, we have separately considered the final rejection only as it applies to claim 1,                     
              as representative of claims 1-5, claim 6, as representative of claims 6-9 and claim 10, as                      
              representative of claims 10-11.                                                                                 
                                                   Claim Interpretation:                                                      
                      Claim 1 is directed to a method of reducing the effect of inhibitory or instability                     
              sequences (INS) within the coding region of a mRNA wherein the inhibitory or instability                        
              sequence results in a post-transcriptional effect.  At page 2 of the specification, applicants                  
              state that the "post-transcriptional effect" includes:                                                          
                      nuclear post-transcriptional processes (e.g. splicing, polyadenylation, and                             
                      transport) as well as cytoplasmic RNA degradation.  All these processes                                 
                      contribute to the final steady-state level of a particular transcript.                                  
              We read this claim to encompass any effect which is observed to occur following                                 
              transcription of the gene to generate the mRNA.  The stability of the transcribed mRNA or                       


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