Appeal No. 2000-1779 Application No. 08/473,204 the isolation of their cDNA, we nevertheless agree with appellants’ conclusion (Brief39, page 19) that: [A] person of ordinary skill in the art would have appreciated that numerous parameters in the protocol taught by Puckett would have required considerable adjustment for it to be used to isolate polynucleotides encoding a human EAA5 receptor. While a person of ordinary skill in the art may possess the requisite knowledge and ability to modify the protocol taught by Puckett, the modification is not obvious unless the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here we see no such reason to modify the references as applied. On this record the examiner relies (Answer, page 4) on the hindsight observation that rat GluR7 of Bettler ‘92 and the human EAA5a receptor proteins have 97% amino acid sequence identity. However, the examiner has provided no factual evidence that one of ordinary skill in this art could use the techniques of Puckett to isolate and identify the DNA sequences encoding the proteins of the claimed assay method with a reasonable expectation of success. In re Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991). Claim 38: The examiner states (Answer, page 15) that “the assay of Bettler employs membrane preparation as the source of the rat GluR7 for ligand binding assay, and therefore renders the claims obvious.” In our opinion, the examiner failed to meet 39 Paper No. 19, received January 22, 1996. 33Page: Previous 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 NextLast modified: November 3, 2007