Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 26


                  Appeal No.  1999-1393                                                                                        
                  Application No.  08/242,344                                                                                  

                                 The instant rejection … requires an artisan to have had a                                     
                          reasonable expectation that a DNA encoding a human glutamate                                         
                          receptor subunit which is structurally and functionally homologous to                                
                          the rodent glutamate receptor subunit GluR6 of the Egebjerg et al.                                   
                          reference could have been isolated by probing a human cDNA library                                   
                          with a DNA encoding that rodent receptor in the manner described in                                  
                          the fourth paragraph on page 7557 of the Puckett et al. publication.                                 
                          Initially, we note that while the claim recites a Markush grouping of two                            
                  distinct EAA4 receptors, we find nothing in the examiner’s rejection or arguments                            
                  leading to any one of these specific sequences, identified by SEQ ID NOs.  In                                
                  addition, we note Puckett (page 7561, column 1) which states “[t]he molecular                                
                  cloning of additional human glutamate receptor genes will be necessary to confirm                            
                  the conservation of this gene family in humans.”  This statement by Puckett detracts                         
                  from the examiner’s close adherence to Puckett’s statement (Page 7559, column 1)                             
                  speculating that “a similar diversity [to that found in rats] is likely to be found in                       
                  human KA receptors.”                                                                                         
                          In our opinion, more is required than merely a high level of homology                                
                  between GluR6 and EAA4a-4b to suggest the use of techniques disclosed by                                     
                  Puckett to obtain DNA encoding any one of EAA4a-4b, recited in the claim by                                  
                  specific SEQ. ID. NOs.  Selective hindsight is no more applicable to the design of                           
                  experiments than it is to the combination of prior art teachings.  In re Dow Chem.                           
                  Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).                                                
                          Comparing the factual evidence before us, in this case, with the factual                             
                  record present in Ex parte Goldgaber, 41 USPQ2d 1172, 1173 (Bd. Pat. App. & Int.                             
                  1995) which affirmed a rejection based on the rationale applied in this case, in                             


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