Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 96


                       Appeal No.  1997-3221                                                                                                                     
                       Application No.  08/249,241                                                                                                               
                                 Accordingly, we affirm the rejection of claims 17 and 19 under 35 U.S.C.                                                        
                       §103 over the combination of McNamara and Sommer.70                                                                                       



                                                                                                                                                                 
                       between the human GluR1-3 compared to rat GluR1-5 as well as human EAA1a                                                                  
                       and EAA2a receptors, but no additional teachings.”                                                                                        
                       70 We recognized that our decision in this appeal may appear to be in conflict with                                                       
                       our decisions in related Appeal Nos.: 1999-1393 (e.g. claim 1, drawn to an isolated                                                       
                       polynucleotide that encodes human GluR2B) and 2000-1778 (e.g. claim 28, drawn                                                             
                       to a method of assaying, wherein a cellular host has incorporated therein a                                                               
                       polynucleotide encoding human GluR3A or GluR3B).  Both the related appeals and                                                            
                       the instant appeal include claims drawn to, or including limitations to,                                                                  
                       polynucleotides generically.  To distinguish these appeals, we note that “[t]here must                                                    
                       be a reason or suggestion in the art for selecting the procedure used, other than the                                                     
                       knowledge learned from applicant’s disclosure.”  In re Dow Chem. Co., 837 F.2d                                                            
                       469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988), citing, Interconnect Planning                                                          
                       Corp. v. Feil, 744 F.2d 1123, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985).  In the                                                           
                       instant appeal the examiner bases the rejection on the combination of McNamara                                                            
                       and Sommer ’90.  McNamara, supra, teaches the identification of GluR4 by                                                                  
                       hybridizing a human cDNA library with a rat GluR4 probe.  McNamara further                                                                
                       teaches the chromosomal location of human GluR4.  In addition, McNamara                                                                   
                       recognizes (Table 1, page 2557) the cross-reactivity among the GluR nucleic acids,                                                        
                       but notes “that the nucleotide homology is highest with the respective rat cDNA                                                           
                       predicted by hybridization results.”  Sommer, relied upon by this examiner, teaches                                                       
                       the nucleic acid sequences for both the flip and flop forms of rat GluR4 are available                                                    
                       from EMBL/GenBank.  In contrast, in both Appeal Nos.: 1999-1393 (GluR2B) and                                                              
                       2000-1778 (GluR3A and GluR3B) the examiner relies on the combination of                                                                   
                       Heinemann in view of Puckett and Sun.  Sun, supra, teaches the chromosomal                                                                
                       location of GluR2.  Sun further teaches the identification of GluR2 using a GluR1                                                         
                       probe.  While both Sun and Puckett recognize flip and flop forms exist, in contrast to                                                    
                       the instant appeal, neither teach a sequence for either form of GluR2.  With regard                                                       
                       to GluR3, none of the applied prior art suggests that it exists in humans, and no                                                         
                       chromosomal location is identified.  Further, the combination of Heinemann, Puckett                                                       
                       and Sun, unlike McNamara do not resolve the issue of cross-hybridization.  On                                                             
                       these records, in our opinion, in contrast to the factual evidence provided in Appeal                                                     
                       Nos. 1999-1393 and 2000-1778, the factual evidence presented in Appeal No.                                                                
                       2000-1779 provides one of ordinary skill in the art a reasonable expectation of                                                           
                       success and suggests to one of ordinary skill in the art the desirability of obtaining                                                    
                       an isolated a polynucleotide encoding GluR4B upon which a membrane preparation                                                            
                       as claimed can be obtained, as explained by the examiner, supra.  Compare Ex                                                              
                       parte Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995).                                                                              

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