Appeal No. 1997-3221
Application No. 08/249,241
and the reasonable expectation of success must be founded in the
prior art, not in the applicant’s disclosure.
In response to the examiner’s rejection appellants state (Brief, page 10):
Given a rat receptor, or any non-human receptor, one of skill
may postulate as to the existence of a similar human receptor, but
until that receptor is actually isolated, its existence and degree of
similarity to the rat receptor with respect to sequence and function,
can only be surmised, not reasonably expected.
In our view, in the absence of a reasonable expectation of success of
isolating and identifying the specific DNA sequence of the claim, one is left with only
an “obvious to try” situation which is not the standard of obviousness under 35
U.S.C. § 103. See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680.
The examiner (Answer, bridging paragraph, pages 12-13) does not find the
argument that a human GluR[5]-2 homology might not exist persuasive. Instead,
while noting that “[t]here was no absolute assurance at the time of the invention that
a human homolog of GluR[5]-2 could be retrieved from a human library,” the
examiner finds that the “great preponderance of the evidence of record” in this case
expressly suggests that “homologs of the rat glutamate receptors will be found in
mammals generally, including humans.”
Appellants provide a table (Brief34, pages 19-20) and explain that GluR5-2
“has only about 97.5% identity with EAA3, including eleven non-conservative
substitutions. In addition to the foregoing differences, GluR5-1 of Heinemann/Bettler
[‘90] has an additional 15 amino acids between residues 371 and 372 of EAA3,
and therefore GluR5-1 has only about 96.5% identity with EAA3a or EAA3b[.]
including eight non-conservative substitutions.” Appellants further identify (Brief,
page 20) that “eight of the positions at which EAA3 differs from GluR5 of
Heinemann/Bettler [‘90] involved serine, i.e., a serine in Heinemann/Bettler [‘90] is
34 Paper No. 22, received November 27, 1996.
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