Appeal No. 1996-1204
Application No. 08/090,369
known at the time of the invention. We find no mention in Shigemoto of the human
counterpart to the rat NK-3. Hopkins, at page 1111, makes a general reference to NK-1,
NK-2, and NK-3, but does not state the source of the listed receptors. Similarly, Gerard
only mentions NK3 at page 20455, column 2, second paragraph, and does not specify the
source of the NK-3 receptor described.
In rebuttal to the examiner's position, appellants cite Dietl (Principal Brief, page 15)
as providing information regarding the level of knowledge in the art regarding human NK-3
receptors. In describing Dietl, appellants urge that (Principal Brief, page 16):
because Dietl et al. suggest that the NK-3 receptor is not present in human
brain tissue, there would not have been a reasonable likelihood of success
that one of ordinary skill in the art would have been able to isolate the gene
encoding the human NK-3 receptor, even if they employed the cDNA
encoding the rat NK-3 receptor. Moreover, Dietl et al. actually teach away
from the successful isolation of the human NK-3 receptor by suggesting that
such an attempt would have been futile.
The examiner criticizes the Dietl disclosure (Answer, pages 13-14) urging that in
assaying for “eledoisin”, a mollusk neuropeptide, it was unlikely that a mammalian NK
receptor would have been expected to bind and “an artisan would have had no
expectations regarding the ability of the human homologue of the NK-3 receptor of
Shigemoto et al. to bind any non-native ligand." Yet, this is the only evidence, before us,
which speaks to the question of whether the human NK-3 receptor or the DNA which
encodes it, was known at the time of the invention. We do not agree that it would have
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