Appeal No. 1997-3221
Application No. 08/249,241
GROUNDS OF REJECTION42
Claims 1, 2, 8-21 and 40 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bettler ‘92 in view of Puckett43.
We reverse.
Claim 1:
The examiner states (Answer44, page 8) that:
[I]t would have been prima facie obvious to the skilled artisan at the
time the invention was made to isolate the cDNA encoding human
GluR7 (EAA5) by using the nucleic acid of rat GluR7 of Bettler [‘92] as
a probe to screen a human brain cDNA library, as taught by Puckett,
in order to obtain large quantities of human GluR7 by subcloning the
isolated nucleic acid into an expression vector and transfecting the
expression vector into a host cell such as Hela cells or Xenopus
oocytes.
We emphasize the examiner’s statement to use the rat GluR7 nucleic acid as
a probe to screen a human brain cDNA library as taught by Puckett. The screening
method taught by Puckett uses reduced stringency conditions (Puckett, bridging
paragraph, pages 7557-558, and page 7558, Results, column 1). Bettler ’92
teaches (page 259, column 1) that “[t]he coding region of the GluR5 cDNA clone
was used as a probe to screen a rat cerebellum cDNA library under low stringency
hybridization conditions … [o]ne cDNA clone encoding part
42 We note the examiner’s new ground of rejection of claims 1 and 2 under
35 U.S.C. § 112, first paragraph made in the Answer, was withdrawn by the
examiner in the Supplemental Answer (Paper No. 37, mailed September 19, 1997.
43 We note the examiner withdrew her reliance on Heinemann that was applied in
the Final Rejection (Paper No. 27, mailed June 6, 1996) in the alternative with
Bettler ’92 in view of Puckett.
44 Paper No. 35, mailed May 13, 1997.
40
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