Appeal No. 1997-3221
Application No. 08/249,241
The examiner’s rejection (Answer, bridging paragraph, pages 7-8) finds that
it would have been prima facie obvious to isolate GluR3 from a human cDNA library
by probing that library with a rat nucleic acid probe taught by Heinemann, using
methodology described by Puckett. The examiner, citing In re Pleuddemann, 910
F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990), states (Answer, page 4) that “[t]he
novelty of the instant invention is in the use of a novel nucleic acid in that method and
not in the method itself and, therefore, the patentability of the claimed method is
dependent upon the patentability of the nucleic acid employed therein.”
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, column 1) 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.
At this point we find that under high stringency hybridization conditions, a
probe for GluR1 cross-reacts with GluR2. Little more is provided in Sun, other than
the “note” at page 1447 which states “[a]fter submission of this manuscript, a paper
[referring to Puckett] appeared reporting …GluH1. This cDNA shows differences
with HBGR1 … in a region corresponding to the alternatively spliced exon identified
in the rodent clones by Sommer [‘92] … and designated as flip and flop forms of
GluR1.” So not only is there cross-reactivity between the receptors, there is also the
possibility of alternative splicing events.
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