Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 31


                   Appeal No.  1999-1393                                                                                          
                   Application No.  08/242,344                                                                                    
                   Bettler ’92 in view of Puckett:                                                                                
                   Claim 35:                                                                                                      
                          According to the examiner (Answer38, bridging paragraph, pages 4-5):                                    

                          Given the teachings of Puckett, the skilled artisan would have                                          
                          expected human GluR7 (EAA5a receptor) to be expressed in human                                          
                          brain and to have nucleic acid and amino acid sequences that are                                        
                          highly identical to those of rat GluR7 of Bettler [’92].  Accordingly, it                               
                          would have been prima facie obvious to the skilled artisan to isolate a                                 
                          cDNA encoding human GluR7 by using the rat GluR7 of Bettler [’92]                                       
                          as a probe to screen the human brain cDNA library of Puckett and to                                     
                          transfect the isolated cDNA into mammalian host cells for production                                    
                          of the receptor.                                                                                        
                   Thereafter, according to the examiner (Answer, page 5), it would have been obvious                             
                   at the time the invention was made to modify the assay of Bettler ’92 by using the                             
                   isolated human GluR7 nucleic acid instead of the rat GluR7.                                                    
                          In response to appellants’ arguments the examiner states (Answer, page 15)                              
                   “Bettler [‘92] teaches isolation of the cDNA encoding rat GluR7 using the cDNA                                 
                   encoding rat GluR5 as a probe to screen a rat brain cDNA library [page 259].  Thus,                            
                   the cited references provide sufficient guidance for obtaining the DNA encoding                                
                   human EAA5a receptor.”                                                                                         
                          We emphasize the examiner’s statement that Bettler ’92 uses rat GluR5                                   
                   cDNA as a probe to isolate the rat GluR7 cDNA.  This step was performed using                                  
                   low stringency hybridization conditions.  Furthermore, the screening method taught                             
                   by Puckett to isolate human cDNA using a rat cDNA probe also uses reduced                                      
                   stringency conditions (Puckett, bridging paragraph, pages 7557-558, and page                                   
                   7558, Results, column 1).  It appears to us that given the cross-reactivity of the                             



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