Appeal No. 1997-3221
Application No. 08/249,241
NR2A, NR2B and NR2C. Monyer teaches (page 1217, bridging paragraph,
columns 1-2) that “[b]y polymerase chain reaction (PCR) amplification of rat brain
cDNA with oligonucleotides constructed to detect such conserved sequences … we
found three cDNAs encoding new glutamate receptor subunits, termed NMDAR2A
(NR2A), NR2B, and NR2C (Fig. 1).”
The examiner notes (Answer, page 6) the human “NR3 of the instant
invention as depicted in SEQ ID NO:2 of the instant application is 97% identical to
the amino acid sequence of the NR2B protein that was depicted in Figure 1 of the
Monyer et al. publication and, therefore, NR3 is clearly the human homolog of
NR2B.”
Claim 15:
Appellants argue (Brief, page 27) that:
The examiner has not explained why the combination of references
would have suggested a method of assaying for a heteromeric
complex of human NR3 protein and human NMDA protein. Just as
the art does not suggest a human counterpart to Monyer’s NR2B
receptor subunit, the art also does not suggest a human NMDA
protein, as recited in claim 15.
Lacking from the examiner’s rejection is any reference to the claimed
proteins, specifically NR3-1 and NR3-2. The examiner merely refers to NR3
generically. See e.g., Answer, page 6 (“therefore, NR3 is clearly the human
homolog of NR2B”). It is well-established that before a conclusion of obviousness
may be made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those references.
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996).
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