Ex parte ESMON et al. - Page 3




              Appeal No. 1997-0483                                                                                        
              Application No. 07/648,900                                                                                  


              Jackman et al. (Jackman), "Characterization of a thrombomodulin cDNA reveals structural                     
              similarity to the low density lipoprotein receptor," Proceedings of the National Academy of                 
              Sciences, USA, Vol. 83, pp. 8834-8838 (December 1986)                                                       
                     References relied on by the appellants are (brief, pp. 16-18):                                       
              Nagashima et al. (Nagashima), "Alanine-scanning Mutagenesis of the Epidermal Growth                         
              Factor-like Domains of Human Thrombomodulin Identifies Critical Residues for Its                            
              Cofactor Activity," The Journal of Biological Chemistry, Vol. 268,  No. 4, pp. 2888-2892                    
              (February 5, 1993)                                                                                          
              Clarke et al. (Clarke), "The Short Loop between Epidermal Growth Factor-like Domains 4                      
              and 5 Is Critical for Human Thrombomodulin Function," The Journal of Biological                             
              Chemistry, Vol. 268, No. 9, pp. 6309-6315 (March 25, 1993)                                                  
              Zushi et al. (Zushi), "Aspartic Acid 349 in the Fourth Epidermal Growth Factor-like                         
                                                                             +2                                           
              Structure of Human Thrombomodulin Plays a Role in Its Ca  -mediated Binding to Protein                      
              C," The Journal of Biological Chemistry, Vol. 266, No. 30, pp. 19886-19889 (October 25,                     
              1991)                                                                                                       
              Hayashi et al. (Hayashi), "Further Localization of Binding Sites for Thrombin and Protein C                 
              in Human Thrombomodulin," The Journal of Biological Chemistry, Vol. 265, No. 33, pp.                        
              20156-20159 (November 25, 1990)                                                                             
                                                        ISSUES4                                                           
                     Claims 5, 6, 13, 16 and 19-22 stand rejected under 35 U.S.C. § 112, first and                        
              second paragraphs, as indefinite and non-enabled.  We reverse.                                              
                     In reaching our decision in this appeal we have given careful consideration to the                   
              appellants' specification and claims and to the respective positions articulated by the                     



                     4The "New ground of rejection" of claim 20 under 35 U.S.C. § 112, second paragraph, as indefinite    
              (answer, pp. 7-8) was withdrawn by the examiner in view of the amendment to claim 20 filed May 13, 1996     
              (Paper No. 40) in the communication mailed June 11, 1996 (Paper No. 41).                                    
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