Appeal No. 1997-3221
Application No. 08/249,241
In establishing this rejection the examiner states (Answer, bridging
paragraph, pages 6-7) that “it would have been obvious to the skilled artisan to
isolate the cDNA encoding human GluR7 (EAA5a receptor) by using the cDNA
encoding rat GluR7 of Heinemann as a probe to screen a human brain cDNA
library, as taught by Heinemann.” The examiner states (Answer, page 6) that
“Heinemann teaches isolation of the cDNA encoding rat GluR7 using the cDNA
encoding rat GluR5 as a probe to screen a rat brain cDNA library (page 40).”
Heinemann (page 40, Example 19) teaches that “cDNA clones encoding the GluR6
and GluR7 genes were isolated from a[n] adult rat forebrain library using a low-
stringency hybridization screening protocol … and … GluR5 cDNA as probe.”
This again emphasizes the cross-reactivity and resulting unpredictability
associated with isolating an EAA5 cDNA (having the claimed SEQ ID NOs)
according to the methodology set forth by the examiner.
Claim 38:
The examiner relies upon Werner to teach binding assays. However, the
examiner again fails to provide the factual evidence necessary to demonstrate that
a person of ordinary skill would have a reasonable expectation of success in
obtaining the nucleic acid necessary to perform the claimed assay method.
Therefore, in our opinion, the examiner failed to meet her burden of establishing a
prima facie case of obviousness in obtaining the necessary nucleic acid to use in
obtaining these membrane preparations.
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