Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 51


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 

                  those raising the issue of obviousness under section 103, must necessarily be                               
                  decided upon its own facts.  In re Jones, 958 F.2d 347, 350,         21 USPQ2d                              
                  1941, 1943 (Fed. Cir. 1992).                                                                                
                         Puckett teaches (page 7560, bridging paragraph, columns 1-2) that:                                   
                                 Many of the amino acid differences (9 of 25 amino acids)                                     
                         between GluHI and GluRI are in a single 38-amino acid region defined                                 
                         by Sommer et al [‘92].… In rodent KA receptors this region is                                        
                         encoded by alternatively spliced exons….  The alternative splicing of                                
                         the exons encoding this region produces KA-sensitive receptor                                        
                         subunits with different agonist and desensitization profiles.  Sommer                                
                         et al. [‘92] …have designated these different types of receptor                                      
                         subunits “flip” and “flop.”  The human cDNA encoding GluHI would be                                  
                         considered as the flip counterpart to the flop version of the rodent                                 
                         clone GluRI….  The conservation of the sequences encoding the flip                                   
                         type of receptor in GluHI suggests that the alternative splicing of                                  
                         similar exons will be used in human glutamate receptor genes.                                        
                         Thus, as appellants argue (Brief, page 6) “[g]iven the teachings of Puckett,                         
                  one of skill in the art would not have known that a human GluR1B existed, or that the                       
                  alterations noted … could have been made to the GluH1 to yield a functional AMPA-                           
                  binding receptor.”                                                                                          
                         Here, we agree with the appellants that there is no teaching or suggestion in                        
                  the applied prior art of the GluR1B receptor having the amino acid sequence of                              
                  residues 1-888 of SEQ ID NO:2 as required by the claim.  In re Ochiai,                                      
                  71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995); In re Fine,                                      
                  837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988).  We also do not                               
                  find that there was a reasonable expectation that one could have obtained such a                            
                  receptor sequence required to perform the claimed methods.  In re                                           
                  O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness                              
                  also requires a “reasonable expectation of success”).                                                       
                  Claim 34:                                                                                                   



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