Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 106


                       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.                                                                                               

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