Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 108


                  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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