Appeal 2007-0866
Application 09/993,234
The Examiner makes the following findings of fact:
1. The claimed subject matter receives the benefit of Appellant’s parent
Application No. 08/710,802, filed September 23, 1996 (Final Rejection 3).
Accordingly, the earliest effective filing date of the instant invention is
September 23, 1996.
2. “[A]n isolated nucleic acid encoding a polypeptide comprising amino
acid residues ‘25-198’ of ‘SEQ ID NO: 6’ as recited in the appealed claim
34 is anticipated by the isolated nucleic acid encoding amino acids 36-209 of
SEQ ID NO: 2 of . . . ‘285 . . . [the corresponding provisional application of
Yu]” (Answer 5-6).3
3 There is some ambiguity on this record with regard to the exact sequence,
identified by “SEQ ID NO”, that is relied upon to establish the Examiner’s
prima facie case. Accordingly, we take a moment to clarify the
nomenclature regarding Yu and the ‘285 provisional application. Yu teaches
two proteins: DR3-VI and DR3. For DR3-VI, Yu teaches nucleic acid
sequence (SEQ ID NO: 1) (Yu, col. 4, l. 67 – col. 5, l. 1) and protein
sequence (SEQ ID NO: 2) (Yu, col. 4, ll. 56-57). For DR3, Yu teaches the
nucleic acid sequence (SEQ ID NO: 3) and protein sequence (SEQ ID NO:
4) (Yu, col. 6, ll. 3-12). As Appellant explains, ‘285 only teaches the
nucleic acid and protein sequences of DDCR (Br. 5), which Yu teach is the
former name of DR3-VI (Yu, col. 5, ll. 59-62). ‘285 teaches that the isolated
nucleic acid of DDCR (DR3-VI) has a sequence as set forth in SEQ ID NO:
1 (‘285 10: 14-16), and the DDCR protein has the sequence as set forth in
SEQ ID NO: 2 (‘285 11: 8-26). While the Examiner initially refers to SEQ
ID NO: 3 of Yu (Answer 4), the Examiner clarifies that in reality it is SEQ
ID NOs: 1 and 2 of ‘285 that serve as the basis for the Examiner’s prima
facie case. As Appellant recognizes that ‘285 is the only disclosure that pre-
dates Appellant’s filing date (Br. 5) and directs attention to the DR3-VI
sequence in ‘285 (Br. 5-10), we find that the Examiner’s reference to SEQ
ID NO: 3 in Yu is a harmless error and that Appellant had a fair opportunity
to address, and in fact did address, the teachings in ‘285.
4
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