Appeal No. 1997-3461
Application No. 07/806,932
Claims 22, 23, 25 and 26 are provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims 1-4
of copending application Steeg II in view of Mullis.3
Claims 22, 23, 25 and 26 are rejected under 35 U.S.C. ' 103 as being
unpatentable over Steeg I in view of Mullis, or the combination of Steeg III and
Bevilacqua in view of Mullis.
We reverse.
DISCUSSION
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 appellants and the examiner. We make reference to the examiner=s Answer (Paper
No. 32, mailed May 10, 1996), for the examiner=s reasoning in support of the rejection.
We further reference appellants’ Brief (Paper No. 31, filed February 21, 1996) and
appellants’ Reply Brief (Paper No. 33, filed July 10, 1996), for the appellants’
arguments in favor of patentability.
The examiner’s basis for each rejection is that the cDNA sequence for murine
nm23 is known, this murine cDNA sequence has been shown to detect human nm23,
and the prior art recognizes that nm23 is differentially expressed in low vs. high
metastatic cells. See, Answer, pages 4-6. The examiner therefore reasons that an
3 We note the examiner’s reference to 08/048,136, matured into Re. 35,097, therefore
this rejection is no longer provisional.
3
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