Appeal No. 2000-1779 Application No. 08/473,204 Here the examiner compares appellants’ disclosed sequence with that of the prior art and finds that the amino acid sequence of the human receptor GluR2 is 98% identical to the rat receptor (Answer, page 5). However, without prior knowledge of appellants’ sequence, the degree of identity between the claimed human GluR2B and rat GluR2 was unknown. "To imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or references of record convey or suggest that knowledge, is to fall victim to the insidious effect of a hindsight syndrome wherein that which only the inventor taught is used against its teacher." W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Given the degree of cross-reactivity between at least GluR1-5 (as taught by the prior art of record), and the existence of alternative splicing variants amongst these receptors, we can not agree with the examiner (Answer, page 7) that “more than a reasonable expectation that rat GluR2 was structurally and functionally predictive of a homologous human protein and that a cDNA encoding it could be isolated by employing the method of Puckett.” The references relied upon, supra, teach that the low stringency hybridization method of Puckett would identify GluR1-5. We do not disagree that given the apparent cross-reactivity of these receptor nucleic acids that an artisan would have certainly identified something. However, based on this record, we do not agree with the examiner that “employing the method of Puckett” a skilled artisan would reasonably have expected to isolate GluR2B as recited in the claim invention. 66Page: Previous 59 60 61 62 63 64 65 66 67 68 69 70 71 72 73 NextLast modified: November 3, 2007