Ex parte KUDLICKI et al. - Page 3



                   Appeal No. 2001-2500                                                                                           
                   Application No. 08/590,729                                                                                     

                          We affirm the rejection of claims 1 and 5-9 but reverse the rejection of                                
                   claims 2-4.                                                                                                    
                                                          Background                                                              
                          The specification discloses a “method of synthesizing a fluorescently                                   
                   labeled protein in a cell-free protein synthesis system.”  Page 1.  Specifically,                              
                   “coumarin-maleimidyl-SAcMet-tRNAf (CPM-SAcMet-tRNAf) was incorporated into                                     
                   the N-terminus of nascent polypeptides that were synthesized on ribosomes in a                                 
                   bacterial cell-free coupled transcription/translation system.”  Page 2.  Then                                  
                   “[f]luorescence techniques were used to monitor changes in the local                                           
                   environment and mobility of the N-terminal probe and in turn effects of the                                    
                   chaperones on folding, activation and release of the nascent or full-length                                    
                   polypeptides from the ribosomes.”  Id.                                                                         
                                                          Discussion                                                              
                   1.  The rejection of claims 1 and 5 -9.                                                                        
                          The claims subject to each rejection stand or fall together.  See the Appeal                            
                   Brief, page 5.  We therefore limit our consideration of this rejection to claim 1, the                         
                   broadest claim subject to this rejection.  Claim 1 is directed to a method of                                  
                   making a fluorescently labeled protein, comprising incubating plasmid DNA                                      
                   encoding the protein of interest with a sample of ribosomes in a prokaryotic                                   
                   coupled transcription/translation system, together with an aminoacyl tRNA having                               
                   a fluorescent label.  The method also includes steps of partially purifying the                                
                   newly synthesized, fluorescently labeled protein away from other fluorescent                                   


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