Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 72


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                  GluR3 and is different from the Cutting membrane preparation what does not teach                               
                  GluR3.                                                                                                         
                          On these facts we agree with the examiner.  While the cellular host may be                             
                  transformed to contain a heterologous polynucleotide encoding human GluR3, there                               
                  is no requirement in the claims that the claimed membrane preparation actually                                 
                  contain GluR3 protein.                                                                                         
                          Accordingly, we affirm the examiner’s rejection of claims 23 and 24 under 35                           
                  U.S.C. § 102(b) as being anticipated by Cutting.59                                                             

                  The rejections under 35 U.S.C. §103:                                                                           
                  The rejection of claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26 and 42-49:                                     
                          The examiner reasons (Answer, page 11) that:                                                           
                          [T]he combination of the Sun et al., Puckett et al., Schofield et al. and                              
                          Grenningloh et al. publications provided a reasonable expectation that                                 
                          the sequence and structure of the GluR3 of Heinemann et al. was                                        
                          predictive of a human homologous protein, they would have found it                                     
                          prima facie obvious to have isolated cDNAs encoding human GluR3                                        
                          by screening a human cDNA library like the one described [by] …                                        
                          Puckett … Schofield …[and] Grenningloh … with a nucleic acid probe                                     
                          corresponding to the rat GluR3 cDNAs of Heinemann et al. in a                                          
                          manner that was directly analogous to those that were employed by                                      
                          each of Puckett et al., Schofield et al. and Grenningloh et al. and then                               
                          to incorporate that cDNA into a ligand binding assay like that which                                   
                          was described by Heinemann….                                                                           
                          The examiner notes (Answer, page 12) that the specification discloses two                              
                  different nucleotide sequences encoding human GluR3A and GluR3B.  However,                                     
                  the examiner finds (Answer, page 12) that since these two different cDNAs were                                 
                  isolated from two different libraries, “[i]t is reasonable to assume that these two                            
                  cDNA libraries did not come from the same individual.”  As a result the examiner                               
                                                                                                                                 
                  59 Note our statement under 37 CFR § 1.196(c), infra.                                                          

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