Appeal No. 1999-1393 Application No. 08/242,344 GROUNDS OF REJECTION29 Claims 23, 25, 26, 37, 39, and 43-45 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Heinemann in view of Bettler ‘90, Sommer ‘92, Puckett and Birnbaumer. We reverse. The rejection under 35 U.S.C. § 103(a): According to the examiner (Answer30, page 6): It would have been obvious to one of ordinary skill in the art at the time the invention was made to isolate a human homolog of the rat GluR5-231 sequence disclosed by Bettler [‘90] from a human cDNA library, employing PCR amplification according to Puckett32, and therewith to assay candidate agonists or antagonists of the human receptor, according to Heinemann, because Bettler [‘90] teaches that GluR5 has properties unique among the known glutamate receptors (page 583, col. 2), because Puckett advocates the cloning of human glutamate receptor genes in order to delimit their postulated relationships to a variety of serious pathological conditions, and 29 We note the Answer contains a single new grounds of rejection over all appealed claims. This new grounds of rejection was made to incorporate Sommer ‘92 (cited by the examiner (Answer, page 4) as new prior art) into the statement of the rejection. 30 Paper No. 23, mailed March 4, 1997, 31 The examiner states (Answer, page 5) that the GluR5-2 cDNA exhibits 86% residue identify with appellants’ EAA3a SEQ ID NO:1 at the DNA level and the predicted translation products are 98% identical. The examiner continues that the identity between the rat clone of EAA3b is substantially equivalent to EAA3a except that it differs at only a single nucleotide, resulting in a change at a single amino acid. 32 The examiner states (Answer, page 5) “Puckett discloses the cloning of a human kainate-binding glutamate receptor, GluHI, which was obtained by PCR amplification using primers derived from the published GluR1 sequence.” The examiner states (Answer, page 14) that “Puckett evidences that PCR was a routine and predictable procedure for the retrieval of homologous clones from mammalian cDNA libraries.“ Puckett does not teach the isolation of GluR1 by use of PCR. Puckett teaches the amplification of a probe [Puckett, page 7557, column 2 and page 7558, Results, column 1] which is then used to screen a cDNA library under reduced stringency hybridization [Puckett, bridging paragraphs, pages 7557-7558 and page 7558, Results, column 1]. 12Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 NextLast modified: November 3, 2007