Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 54


                         Appeal No.  1997-3221                                                                                                                            
                         Application No.  08/249,241                                                                                                                      
                         II.       The GLUR2 Subclass:                                                                                                                    
                                                                    Appeal No. 1999-1393                                                                                  
                                                                 Application No. 08/242,344                                                                               
                                   Claims 1 and 2 are illustrative of the subject matter on appeal and are                                                                
                         reproduced below:                                                                                                                                
                                   1. An isolated polynucleotide that encodes human GluR2B.                                                                               
                                   2. An isolated polynucleotide according to claim 1, that encodes human                                                                 
                                        GluR2B having amino acid sequence SEQ ID NO:2.                                                                                    
                         GROUNDS OF REJECTION                                                                                                                             
                                   Claims 1-16 are rejected under 35 U.S.C. § 103 over Heinemann in view of                                                               
                         Puckett and Sun.                                                                                                                                 
                                   We reverse.                                                                                                                            
                         The rejection under 35 U.S.C. § 103:                                                                                                             
                                   The examiner states (Answer48, bridging paragraph, pages 8-9) that:                                                                    

                                             The isolation of a cDNA encoding the human counterpart of the                                                                
                                   rat GluR2 subunit that was described in the Heinemann et al.                                                                           
                                   publication by probing the cDNA library of Sun et al. or Puckett et al.,                                                               
                                   each of which was constructed from mRNA isolated from human                                                                            
                                   brain, with a nucleic acid probe encoding all or part of rat GluR2 in a                                                                
                                   manner that was directly analogous to the method described by                                                                          
                                   Puckett et al. to facilitate the recombinant expression and                                                                            
                                   characterization of the encoded product in the absence of other                                                                        
                                   human glutamate receptor subunits for those reasons that were                                                                          
                                   expressly given by Sun et al. would have been prima facie obvious to                                                                   
                                   an artisan of ordinary skill in the art of molecular biology at the time                                                               
                                   that the instant invention was made.  Given the high level of sequence                                                                 
                                   conservation between rat and human GluR1s as disclosed in each of                                                                      
                                   the Sun et al. and Puckett et al. references and the high degree of                                                                    
                                   sequence and structural similarity between the rat GluR1 and GluR2                                                                     
                                   subunits as disclosed by Heinemann et al., an artisan had more than                                                                    
                                   a reasonable expectation that the GluR2 of Heinemann et al. was                                                                        
                                                                                                                                                                          
                         48 Paper No. 22, mailed January 13, 1998.                                                                                                        

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