Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 41


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  of the GluR7 open reading frame was identified.”  It appears to us that given the                           
                  cross-reactivity of the nucleic acids under low stringency hybridization conditions, a                      
                  person of ordinary skill in this art would reasonable obtain more than the human                            
                  receptor sought.                                                                                            
                         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.                                   
                         Therefore we agree with appellants’ argument (Brief, page 24) that:                                  
                         At most, Puckett would have provided the person of ordinary skill in                                 
                         the art with a starting point for developing a generally suitable                                    
                         methodology for isolating a targeted polynucleotide from a DNA                                       
                         library.  The reference would not have provided a method that                                        
                         reasonably would have been expected to yield a polynucleotide                                        
                         encoding a human EAA5 receptor in accordance with the claimed                                        
                         invention.                                                                                           
                  O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1681 (what was “obvious to try” was to                              
                  explore a new technology or general approach that seemed to be a promising field                            
                  of experimentation, where the prior art gave only general guidance as to the                                
                  particular form of the claimed invention or how to achieve it).                                             
                         The examiner relies (Answer, page 6) on the observation that rat GluR7 of                            
                  Bettler ‘92 and the human EAA5a receptor proteins have 97% sequence identity.                               
                  However, after pointing out the difference between rat GluR7 and human EAA5                                 
                  (Brief45, pages 26-28) appellants’ argue (Brief, page 28) “[t]he fact that, in hindsight,                   

                                                                                                                              
                  45 Paper No. 34, received February 6, 1997.                                                                 

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