Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 109


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  

                  human receptors in which those receptors were structurally and functionally                                  
                  analogous to rat receptors which were also described therein.”  While we do not                              
                  disagree with the examiner’s statement, we do disagree with the conclusion he                                
                  draws from it, based on the facts in this record.                                                            
                          The examiner sets forth Moriyoshi as teaching the rat NMDAR1, Puckett for                            
                  the teaching that human GluH1 was isolated using a probe from rat GluR1, and two                             
                  references (Grady and Zhou) which teach cloning cDNA for the human dopamine                                  
                  receptors.  However, on this record the examiner does not address which of                                   
                  appellants’ receptor variants are reasonably expected to be identified using the                             
                  methodology set forth in the rejection.  Appellants report (specification, page 4, lines                     
                  27-30) that “[n]aturally occurring variants include, but are not restricted to, the                          
                  receptor variants of the human NMDAR1-1 receptor herein designated human                                     
                  NMDAR1-2, NMDAR1-3A, NMDAR1-3B, NMDAR1-3C, NMDAR1-4, NMDAR1-5,                                               
                  NMDAR1-6, NMDAR1-7 and NMDAR1-8.”                                                                            
                          At the time this invention was made, and on this record, an artisan only had                         
                  knowledge of Moriyoshi’s rat NMDAR1 sequence.  There was no recognition, as                                  
                  appellants’ note (Brief, page 17), that a human counterpart to the rat receptor                              
                  existed, let alone that a number of naturally occurring variants existed.  In re                             
                  O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness                               
                  also requires a “reasonable expectation of success”).                                                        
                          The examiner’s rejection of all the claims requires the successful isolation of                      
                  a cDNA what encodes the human NMDAR1 receptor(s).  In our opinion, on this                                   
                  record, there was no reasonable expectation of successfully isolating such a                                 
                  receptor.                                                                                                    





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