Ex Parte Cuthbertson et al - Page 12

                Appeal No. 2007-1140                                                                         
                Application No. 10/753,729                                                                   

                considered to conflict with the instant claims.  Appellants have taken it be                 
                the claims of U.S. Pat. Pub. 2003/0204049 which corresponds to the ‘575                      
                Application (Substitute Br. 10).  However, the published claims were                         
                amended in the co-pending application.  In particular, the N-terminus of the                 
                peptide compound claimed in the co-pending ‘575 Application does not                         
                specify that it can be a reporter moiety (dated Sept. 18, 2006), a fact upon                 
                which the § 103 rejection over Cuthbertson is based.  See supra on p. 7.                     
                Consequently, we vacate this rejection and remand to the Examiner to                         
                determine whether an obvious-type double-patenting rejection is appropriate                  
                in view of the currently pending claims of the co-pending application.                       

                                             OTHER ISSUES                                                    
                      Upon return of the application to the technology center, the Examiner                  
                should reconsider the patentability of the subject matter of claims 12, 19,                  
                and 21, particularly in view of the new ground of rejection set forth in this                
                decision.                                                                                    
                      With respect to claim 12, the Examiner should determine whether the                    
                chelating group disclosed in Cuthbertson at 11 is the same as the structure                  
                recited in the claim or an obvious variant of it.                                            
                      Claim 19 recites that the antineoplastic agent of claim 18 is selected                 
                from a list of known antineoplastic agents.  The Examiner should determine                   
                whether this subject is obvious over of Cuthbertson in view of the disclosure                
                in WO 98/10795 cited on 5: 14-19 that doxorubicin attached to an RGD                         
                peptide has been used to target drugs.                                                       



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