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).
96
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