Ex Parte BERG et al - Page 2


                  Appeal No.  1999-2231                                                                                    
                  Application No.  08/278,774                                                                              
                             specific proteolytic agent recognition site, wherein said second non-                         
                             natural site-specific proteolytic agent recognition site is located                           
                             between said collagen chain and said second propeptide.                                       
                         The references relied upon by the examiner are:                                                   
                  Olsen et al. (Olsen), “Purification and Characterization of a Peptde from the                            
                  Carboxy-Terminal Region of Chick Tendon Procollagen Type I,” Biochemistry,                               
                  Vol. 16, No. 13, pp. 3030-3036 (1977)                                                                    
                  Prockop et al. (Prockop), “The Biosynthesis of Collagen and its Disorders,” New                          
                  England Journal of Medicine, Vol. 301, No. 1, pp. 13-23 (1979)                                           
                  Chu et al. (Chu), “Human proI1(I) collagen gene structure reveals evolutionary                           
                  conservation of a pattern of introns and exons,” Nature, Vol. 310, pp. 337-340                           
                  (1984)                                                                                                   
                  Carter, “Site-Specific Proteolysis of Fusion Proteins,” Protein Purification: From                       
                  Molecular Mechanisms to Large-Scale Processes, Vol. 47, Chp. 13, pp. 181-193                             
                  (American Chemical Society 1990)                                                                         
                                              GROUND OF REJECTION1                                                         
                         Claims 1-3, 6-9, 14-16 and 18 stand rejected under 35 U.S.C. § 103 as                             
                  being unpatentable over Chu, Prockop and Olsen in view of Carter.                                        
                  We affirm the rejection of claims 1-3, 8, 9, 14-16 and 18.  We reverse the                               
                  rejection of claims 6 and 7.                                                                             
                                                     DISCUSSION                                                            
                         In reaching our decision in this appeal, we considered appellants’                                
                  specification and claims, in addition to the respective positions articulated by the                     
                  appellants and the examiner.  We make reference to the examiner’s Answer2,                               
                  and the for the examiner’s reasoning in support of the rejections.  We further                           
                                                                                                                           
                  1 We note the examiner withdrew the Final rejection of claim 14 under 35 U.S.C.                          
                  § 112, first and second paragraph.  Answer, page 3.                                                      
                  2 Paper No. 29, mailed June 19, 1998.  We note the Answer incorrectly notes                              
                  that it is Paper No. 27.  Paper No. 27, mailed May 19, 1998 represents a                                 
                  Notification of non-compliance with the requirements of 37 CFR § 1.192(c).                               

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