Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 100


                  Appeal No.  1997-3221                                                                                      
                  Application No.  08/249,241                                                                                
                  The rejection under 35 U.S.C. § 103:                                                                       
                         The examiner explains (Answer74, page 4) that while Keinanen do not teach                           

                  using human GluR4B, the reference teaches a method of assaying interactions                                
                  using a cellular host, or membrane derived from a cellular host, that expresses the                        
                  rat homolog of human GluR4B.  The examiner relies upon Sommer ‘90 for the                                  
                  teaching, inter alia, that “GluR exists as a flip or flop (A or B) form.”  See Answer,                     
                  page 5.  The examiner explains at page 6 of the Answer, that McNamara obtained a                           
                  cosmid clone containing a portion of human GluR4, and that the nucleic acid of this                        
                  GluR4 was 93% identical to the rat GluR4B.                                                                 
                         At page 8 of the Answer, the examiner concludes that:                                               
                                 It would have been obvious to a person of ordinary skill in the                             
                         art at the time the invention was made to use the assay of Keinanen et                              
                         al. using a human cDNA for heterologous GluR4B receptor                                             
                         expression obtained by using the DNA of McNamara et al. as a                                        
                         radiolabeled probe to screen a commercially available human brain                                   
                         or placental cDNA library and subcloning the isolated library clone into                            
                         the pCDM8 plasmid and transfecting a eukaryotic cell of heterologous                                
                         receptor expression by the screening, subcloning, and transfection                                  
                         methods taught by Keinanen et al.                                                                   
                         The examiner’s rejection hinges on the rationale that it would be obvious to                        
                  obtain the human GluR4B cDNA, and once obtained, to introduce the cDNA into a                              
                  system whereby the claimed assay could be performed.  It appears to us that the                            
                  examiner’s rejection of the claims in the present application under        35 U.S.C. §                     
                  103 is inconsistent with the determination that claims 1, 4 and 8 of United States                         



                                                                                                                             
                  74 Paper No. 21, mailed January 22, 1999.                                                                  

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