Appeal No. 1997-3221
Application No. 08/249,241
The instant rejection … requires an artisan to have had a
reasonable expectation that a DNA encoding a human glutamate
receptor subunit which is structurally and functionally homologous to
the rodent glutamate receptor subunit GluR6 of the Egebjerg et al.
reference could have been isolated by probing a human cDNA library
with a DNA encoding that rodent receptor in the manner described in
the fourth paragraph on page 7557 of the Puckett et al. publication.
Initially, we note that while the claim recites a Markush grouping of two
distinct EAA4 receptors, we find nothing in the examiner’s rejection or arguments
leading to any one of these specific sequences, identified by SEQ ID NOs. In
addition, we note Puckett (page 7561, column 1) which states “[t]he molecular
cloning of additional human glutamate receptor genes will be necessary to confirm
the conservation of this gene family in humans.” This statement by Puckett detracts
from the examiner’s close adherence to Puckett’s statement (Page 7559, column 1)
speculating that “a similar diversity [to that found in rats] is likely to be found in
human KA receptors.”
In our opinion, more is required than merely a high level of homology
between GluR6 and EAA4a-4b to suggest the use of techniques disclosed by
Puckett to obtain DNA encoding any one of EAA4a-4b, recited in the claim by
specific SEQ. ID. NOs. Selective hindsight is no more applicable to the design of
experiments than it is to the combination of prior art teachings. In re Dow Chem.
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Comparing the factual evidence before us, in this case, with the factual
record present in Ex parte Goldgaber, 41 USPQ2d 1172, 1173 (Bd. Pat. App. & Int.
1995) which affirmed a rejection based on the rationale applied in this case, in
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