Appeal No. 2000-1780 Application No. 08/403,663 human receptors in which those receptors were structurally and functionally analogous to rat receptors which were also described therein.” While we do not disagree with the examiner’s statement, we do disagree with the conclusion he draws from it, based on the facts in this record. The examiner sets forth Moriyoshi as teaching the rat NMDAR1, Puckett for the teaching that human GluH1 was isolated using a probe from rat GluR1, and two references (Grady and Zhou) which teach cloning cDNA for the human dopamine receptors. However, on this record the examiner does not address which of appellants’ receptor variants are reasonably expected to be identified using the methodology set forth in the rejection. Appellants report (specification, page 4, lines 27-30) that “[n]aturally occurring variants include, but are not restricted to, the receptor variants of the human NMDAR1-1 receptor herein designated human NMDAR1-2, NMDAR1-3A, NMDAR1-3B, NMDAR1-3C, NMDAR1-4, NMDAR1-5, NMDAR1-6, NMDAR1-7 and NMDAR1-8.” At the time this invention was made, and on this record, an artisan only had knowledge of Moriyoshi’s rat NMDAR1 sequence. There was no recognition, as appellants’ note (Brief, page 17), that a human counterpart to the rat receptor existed, let alone that a number of naturally occurring variants existed. In re O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness also requires a “reasonable expectation of success”). The examiner’s rejection of all the claims requires the successful isolation of a cDNA what encodes the human NMDAR1 receptor(s). In our opinion, on this record, there was no reasonable expectation of successfully isolating such a receptor. 109Page: Previous 102 103 104 105 106 107 108 109 110 111 112 113 114 115 116 NextLast modified: November 3, 2007