Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 84


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                          Puckett relied upon by the examiner (Answer, page 11) to teach isolation of                            
                  human GluR1, teaches the use of a reduced stringency hybridization (bridging                                   
                  paragraph pages 7557-558).  Furthermore, Puckett also teaches the existence of                                 
                  alternative splicing events (page 7560, column 1), later confirmed by Sun’s “note,”                            
                  supra.                                                                                                         
                          The examiner relies upon Heinemann to teach GluR3 (Answer, page 4).  We                                
                  note Heinemann’s Example 8 (page 27) which teaches “cDNA clones encoding the                                   
                  GluR2 and GluR3 genes were isolated from an adult rat forebrain library using a                                
                  low-stringency hybridization screening protocol … and a radiolabeled fragment of                               
                  the GluR1 cDNA as probe.”                                                                                      
                          Thus a GluR1 probe cross-reacts with GluR2 and GluR3.  Thus, at the time                               
                  this invention was made, following the methodology set forth by the examiner one                               
                  would have expected a probe based on Heinemann’s GluR3 to cross-react with at                                  
                  least GluR1-2.                                                                                                 
                          However, given the teachings of Sun, Puckett and Heinemann, supra, of                                  
                  cross-reactivity at the nucleic acid level we are of the opinion that a person of                              
                  ordinary skill in the art would not have a reasonable expectation of success in                                
                  isolating the GluR3A or GluR3B receptor.  Furthermore, none of these references                                
                  teach the existence of two forms of the GluR3 receptor, GluR3A    and 3B.                                      
                          We do not agree with the examiner’s conclusion (Answer, bridging                                       
                  paragraph, pages 8-9) that due to the library in which they were isolated the GluR3A                           
                  and GluR3B sequences “obviously correspond to allelic variations of the same                                   
                  protein and appear to be functionally indistinguishable.”  On this record, in the                              

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