Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 66


                  Appeal No.  1997-3221                                                                                         
                  Application No.  08/249,241                                                                                   
                          Here the examiner compares appellants’ disclosed sequence with that of the                            
                  prior art and finds that the amino acid sequence of the human receptor GluR2 is                               
                  98% identical to the rat receptor (Answer, page 5).  However, without prior                                   
                  knowledge of appellants’ sequence, the degree of identity between the claimed                                 
                  human GluR2B and rat GluR2 was unknown.  "To imbue one of ordinary skill in the                               
                  art with knowledge of the invention in suit, when no prior art reference or references                        
                  of record convey or suggest that knowledge, is to fall victim to the insidious effect of                      
                  a hindsight syndrome wherein that which only the inventor taught is used against its                          
                  teacher."  W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220                            
                  USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).                                         
                          Given the degree of cross-reactivity between at least GluR1-5 (as taught by                           
                  the prior art of record), and the existence of alternative splicing variants amongst                          
                  these receptors, we can not agree with the examiner (Answer, page 7) that “more                               
                  than a reasonable expectation that rat GluR2 was structurally and functionally                                
                  predictive of a homologous human protein and that a cDNA encoding it could be                                 
                  isolated by employing the method of Puckett.”  The references relied upon, supra,                             
                  teach that the low stringency hybridization method of Puckett would identify GluR1-5.                         
                  We do not disagree that given the apparent cross-reactivity of these receptor                                 
                  nucleic acids that an artisan would have certainly identified something.  However,                            
                  based on this record, we do not agree with the examiner that “employing the method                            
                  of Puckett” a skilled artisan would reasonably have expected to isolate GluR2B as                             
                  recited in the claim invention.                                                                               



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