Ex parte TOM-MOY et al. - Page 3




                Appeal No. 1996-1618                                                                                                           
                Application No. 07/876,804                                                                                                     



                         The references relied on by the examiner are:                                                                         
                Katz et al.  (Katz)                                4,496,654                        Jan. 29, 1985                              
                Bastiaans                                          4,735,906                        Apr.   5, 1988                             
                Richards et al.  (Richards)                        4,847,193                        Jul.  11, 1989                             
                                       3                                                                                                       
                Baer et al.  (Baer)                                5,130,527                        Jul.  14, 1992                             
                European Patent Application (Hansen)    139 489                                     May   2, 1985                              
                Wilchek et al.  (Wilchek), “REVIEW: The Avidin-Biotin Complex in Bioanalytical                                                 
                Applications,” 171 Analytical Biochemistry, pp. 1-32 (1988).                                                                   
                Yanagita et al.  (Yanagita), “Solubilization and purification of membrane proteins” in                                         
                TECHNIQUES FOR THE ANALYSIS OF MEMBRANE PROTEINS, Chapter 2, pp.                                                               
                61-76 (Ragan et al., eds., Chapman and Hall, London, 1986).                                                                    
                                                                 ISSUES4                                                                       
                         Claim 29 stands rejected under 35 U.S.C. § 112, ¶¶ 1 and 2 as the claimed                                             
                invention is not described in such full, clear, concise and exact terms as to enable any                                       
                person skilled in the art to make and use the same, and/or for failing to particularly point                                   
                out and distinctly claim the subject matter which applicants regard as the invention.  Claims                                  
                17, 18, 22-25, 27 and 28 stand rejected under 35 U.S.C. § 103 as being unpatentable                                            
                over Bastiaans, Wilchek and Katz.  Claims 17, 18, 23 and 26 stand rejected under 35                                            


                         3Baer was relied upon in the alternative to Bastiaans in finally rejecting claims 17-29 under                         
                35 U.S.C. § 103 (see Office action mailed November 29, 1993 (Paper No. 14), page 3).  However, as                              
                indicated infra, Baer was withdrawn as a reference when all prior rejections were withdrawn in the answer.                     
                See also reply brief, page 2.                                                                                                  
                         4According to the examiner’s answer (Paper No. 25), “[a]ll previous rejections have been withdrawn                    
                in view of the new grounds of rejection set forth below” (page 3).                                                             
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