Ex Parte MAKOWSKI et al - Page 2


                 Appeal No.  2002-0796                                                         Page 2                    
                 Application No. 09/110,994                                                                              

                        separating from the library members of the library which have an affinity                        
                 for the ligand which is greater than the affinity possessed by other members of                         
                 the library for the ligand,                                                                             
                        determining the nucleic acid sequences which encode the members which                            
                 have been separated from the library and translating these nucleic acid                                 
                 sequences into peptide sequences, and                                                                   
                        identifying protein(s) which contain a portion of the translated peptide                         
                 sequences or which correspond to consensus peptide sequences derived from                               
                 statistical analysis of said translated library member peptide sequences.                               
                        The examiner relies upon the following references:                                               

                 Ivanenkov et al. (Ivanenkov) “Characterization of S-100b binding Epitopes,”                             
                 The Journal of Biological Chemistry, Vol. 270, No. 24, pp. 14651-14658 (1995)                           
                 Petrenko et al. (Petrenko) “A library of Organic Landscapes on Filamentous                              
                 Phage,” Protein Engineering, Vol. 9, No.9 pp. 797-801 (1996)                                            
                 Sparks et al. (Sparks) “Cloning of Ligand Targets: Systematic isolation of SH3                          
                 Domain-Containing proteins,” Nature Biotechnology, Vol. 14, pp. 741-744 (1996)                          
                        Claims 1-181 stand rejected under 35 U.S.C. § 103(a) as being obvious                            
                 over the combination of Petrenko and Ivanenkov or Sparks.  After careful review                         
                 of the record and consideration of the issue before us, we affirm the rejection as                      
                 to claims 1, 2, 4-5, 10-13 and 16-18, but reverse as to claims 3, 6-9, 14 and 15.                       






                                                                                                                         
                 1 We note that the Examiner’s Answer states that claims 1-15 are subject to the                         
                 rejection, but does not mention claims 16-18.  As appellants state that claims 1-                       
                 18 are subject to the rejection, and as the Advisory Action refers to rejected                          
                 claims 1-18, see Paper No. 14, we are treating the reference to 15 as a                                 
                 typographical error, and the rejection has been reviewed as it pertains to all of                       
                 the pending claims, i.e., claims 1-18.                                                                  





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