Ex parte SCHIMMEL - Page 2




               Appeal No. 1997-3242                                                                                                
               Application No. 07/929,834                                                                                          
                       Claim 1 is representative:                                                                                  
                       1.  A method for designing a compound specifically inhibiting targeted ribonucleic                          
               acid function comprising the steps of:                                                                              
                       (a)  determining the nucleotide sequence of a site in the targeted ribonucleic acid                         
               that is critical to function, wherein the site is referred to as a critical site;                                   
                       (b)  determining the secondary structure of the region of the targeted ribonucleic                          
               acid in which the critical site is located;                                                                         
                       (c)  determining the three-dimensional structure of the targeted RNA, including the                         
               position of the critical site relative to the major and minor grooves;                                              
                       (d)  determining the sequence of nucleotides and structure flanking the critical site                       
               in the targeted ribonucleic acid that is specific to the critical region of the ribonucleic acid                    
               to be inhibited and within the minor groove; and                                                                    
                       (e) designing a compound to bind specifically to the critical site within the minor                         
               groove of the targeted ribonucleic acid, wherein binding of the compound to the targeted                            
               RNA inhibits the function of the targeted RNA.                                                                      
                       No prior art references are relied on by the examiner.                                                      
                       The claims stand rejected as follows:                                                                       
                       I.  Claims 1-14 under 35 U.S.C. § 112, first paragraph, as based on a non-enabling                          
               disclosure.                                                                                                         
                       II.  Claims 1-5, 8-10 and 12-14 under 35 U.S.C. § 101 (provisional) as claiming the                         
               same invention as that of claims 1, 3, 14-16, 4-6 and 8-10 of copending application serial                          
               no. 08/249,689.                                                                                                     
                       III.  Claims 1, 2, 8-11, 13 and 14 under the doctrine of obviousness-type double                            
               patenting (provisional) as unpatentable over claims 1, 3-6, 9 and 10 of copending                                   
               application serial no. 08/249,689.                                                                                  
                       IV.  Claims 1-5, 7-10 and 12-14 under the doctrine of obviousness-type double                               
               patenting (provisional) as unpatentable over claims 1, 3, 14-16, 4-6 and 8-10 of copending                          
               application serial no. 08/249,689.                                                                                  

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