Appeal No. 2000-1779 Application No. 08/473,204 The examiner states (Answer46, page 5) that: Cutting et al. clearly shows that every element of the claimed method, except for the particular DNA employed therein, was known in the art in the combination claimed prior to the making of the instant invention. To have incorporated a cDNA encoding a human glutamate receptor subunit like the one that was described by Puckett et al., or any functionally equivalent allelic variant thereof, in place of the cDNA of Cutting et al. to permit the characterization of the human glutamate receptor encoded thereby would have been prima facie obvious to an artisan of ordinary skill in the art of molecular biology in view of this combination of references at the time that the instant invention was made. With regard to the Puckett sequence, the examiner states (Answer, page 4): Because the cDNAs encoding the glutamate receptor subunit of the instant invention and GluH1 of Puckett et al. were both isolated from human brain cDNA libraries by probing those libraries with a DNA probe encoding part of the rat receptor subunit GluR1 and because the amino acid sequence encoded thereby are identical in 898 out of 906 amino acid residues (99.1%, including signal sequence) it is more than reasonable to conclude that they are nothing more than allelic variants of the same protein and, in the absence of unexpected properties, either of these DNAs would have been prima facie obvious in view of the other at the time of the instant invention. The claims on appeal are drawn to “[a] method of assaying a test ligand” using a human GluR1B (having a specific SEQ ID NO.) receptor-producing cell, or membrane preparation. However, it is obviously essential to the examiner’s rejection that a cDNA encoding the GluR1B receptor must first be successfully isolated. Once isolated the cDNA is used to engineer a cell to express the receptor, and then the claimed method can be performed. 46 Paper No. 18, mailed September 23, 1996. 47Page: Previous 40 41 42 43 44 45 46 47 48 49 50 51 52 53 54 NextLast modified: November 3, 2007