Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 64


                       Appeal No.  1997-3221                                                                                                                     
                       Application No.  08/249,241                                                                                                               
                                 The examiner responds (Answer, page 10) to appellants’ argument by citing                                                       
                       to Sun’s teaching of a cDNA encoding two thirds of human GluR2 as well as the                                                             
                       chromosomal location of the corresponding gene in humans.  The examiner also                                                              
                       states (Answer, bridging paragraph, pages 11-12) “[t]here is no art of record which                                                       
                       reports that a human homologue of a known rat neurotransmitter receptor does not                                                          
                       exist.”  This is not the proper foundation for an obviousness rejection.                                                                  
                                 To be proper, the examiner’s rejection requires a reasonable expectation of                                                     
                       success in obtaining the human GluR2B receptor of a specified sequence as                                                                 
                       claimed.  The examiner’s rejection (Answer, bridging paragraph, pages 6-7) finds                                                          
                       that it would have been prima facie obvious to isolate GluR2B from a human cDNA                                                           
                       library by probing that library with a rat nucleic acid probe “in a manner that was                                                       
                       directly analogous to the one described by Puckett et al.”                                                                                
                                 Sun (abstract) identifies “a second clone, HBGR2, contains approximately                                                        
                       two-thirds of the coding region of a receptor homologous to rat brain clone GluR2.”                                                       
                       Sun teaches (page 1443, Materials and Methods, column 2) that a probe was                                                                 
                       amplified using two PCR primers derived from GluR1.  This probe was then used                                                             
                       (Sun, page 1444, bridging paragraph, columns 1-2) for ”[h]ybridization screening [of                                                      
                       a human brain cDNA library] at high stringency.”  This screen yielded four positive                                                       
                       clones, derived from two different transcripts.  The first clone was found to be                                                          
                       homologous to rat GluR1, the second clone was found to be homologous to GluR2.                                                            
                       Sun, page 1444, bridging paragraph, columns 1-2.  Sun localizes the HBGR2-                                                                
                       encoding gene on chromosome                                                                                                               
                                                                                                                                                                 
                       54 Paper No. 36, received January 4, 1999.                                                                                                
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