Appeal No. 1997-3221
Application No. 08/249,241
the isolation of their cDNA, we nevertheless agree with appellants’ conclusion
(Brief39, page 19) that:
[A] person of ordinary skill in the art would have appreciated that
numerous parameters in the protocol taught by Puckett would have
required considerable adjustment for it to be used to isolate
polynucleotides encoding a human EAA5 receptor.
While a person of ordinary skill in the art may possess the requisite
knowledge and ability to modify the protocol taught by Puckett, the modification is
not obvious unless the prior art suggested the desirability of the modification. In re
Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984). Here we see
no such reason to modify the references as applied.
On this record the examiner relies (Answer, page 4) on the hindsight
observation that rat GluR7 of Bettler ‘92 and the human EAA5a receptor proteins
have 97% amino acid sequence identity. However, the examiner has provided no
factual evidence that one of ordinary skill in this art could use the techniques of
Puckett to isolate and identify the DNA sequences encoding the proteins of the
claimed assay method with a reasonable expectation of success. In re Vaeck, 947
F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991).
Claim 38:
The examiner states (Answer, page 15) that “the assay of Bettler employs
membrane preparation as the source of the rat GluR7 for ligand binding assay, and
therefore renders the claims obvious.” In our opinion, the examiner failed to meet
39 Paper No. 19, received January 22, 1996.
33
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