Appeal No. 1997-3221
Application No. 08/249,241
Accordingly, we remand the case to the examiner to first decide whether the
amendment to claim 15 was properly entered, and to determine the scope of the
claim. Thereafter, the examiner should determine the availability of Moriyoshi as
prior art against the claim.
The rejection of claims 1-11, 14 and 15 under 35 U.S.C. § 103:
The examiner states (Answer, page 6) that an “artisan would have found the
isolation of a cDNA encoding the human homologue of the rat NMDA receptor of
Moriyoshi et.[]al. by employing the expression cloning method described therein but
employing a cDNA library prepared from human forebrain mRNA in place of rat
mRNA to have been prima facie obvious at the time of the instant invention.”
The examiner further states (Answer, page 8) that:
Because of the known similarities between rat NMDAR1 and rat
GluR1 which were disclosed in the Moriyoshi et.[]al. publication and
the known similarities between GluR1 and its human homologue as
described in Figure 1 on page 7559 of the Puckett et.[]al. publication,
an artisan would have reasonably expected a cDNA library which had
been prepated [sic] from human brain mRNA to contain a cDNA
encoding an NMDAR1 which is analogous both structurally and
functionally to the rat NMDAR1 of Moriyoshi et al.
In response appellants argue (Brief, page 17) that “one of ordinary skill might
have postulated the existence of a similar human receptor. Until a human homolog
actually were isolated, however, its existence and degree of similarity, both
structural and functional, to the rat receptor could only have been surmised, not
reasonably expected.” Appellants then point to a number of differences (Brief, page
25) between the human receptor and the rat receptor.
The examiner responds, inter alia, by stating (Answer, page 11) “[t]here are
literally hundreds of prior art publications which describe isolated cDNAs encoding
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