Appeal No. 1997-3221
Application No. 08/249,241
nucleotides ….’” However, contrary to appellants’ assertion claim 15 was not
amended in Paper No. 11. Claim 15 was later amended in Paper No. 19 (received
December 22, 1995) to introduce hybridization conditions, but the amendment
addressing the “nucleic acids” was never made.
This failure to amend appears to be an inadvertent error on appellants’ part
as appellants argue (Brief80, page 8) that “Moriyoshi does not teach an
oligonucleotide comprising ‘at least 17 nucleotides’” [emphasis added]. However,
we must decide the rejection on the basis of the claims as they now appear.
Accordingly we affirm the examiner’s rejection of claim 15, under 35
U.S.C. § 112, second paragraph.
The rejection of claim 15 under 35 U.S.C. § 102(b):
The examiner states (Answer, page 4) that “[t]his claim, as amended,
encompasses any oligonucleotide which hybridizes under stringent conditions to
any polynucleotide which encodes amino acids 1 to 867 of SEQ ID NO:2.” The
examiner then explains that since the claimed NMDAR1 is at least 99% identical to
“the cDNA descried in Figure 2 on page 33 of Moriyoshi.” The examiner reasons
that given the identity of the sequences the Moriyoshi sequence anticipates the
claimed invention.
Appellants argue (Brief, page 8) “that Moriyoshi does not teach an
oligonucleotide comprising ‘at least 17 nucleotides’ which hybridizes under
79 Paper No. 21, mailed June 3, 1996.
80 Paper No.18, received February 22, 1996.
106
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