Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 32


                       Appeal No.  1999-1393                                                                                                                     
                       Application No.  08/242,344                                                                                                               
                       nucleic acids (e.g. a GluR5 probe detects GluR7) under the low stringency                                                                 
                       hybridization conditions taught by the references, a person of ordinary skill in this art                                                 
                       would reasonably obtain more than the human receptor sought.                                                                              
                                 In the absence of a reasonable expectation of success of isolating and                                                          
                       identifying the specific DNA sequence of the claim, one is left with only an “obvious                                                     
                       to try” situation which is not the standard of obviousness under 35 U.S.C. § 103.                                                         
                       See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680.                                                                                   
                                 We note the examiner’s statement (Answer, bridging paragraph, pages 15-                                                         
                       16) “[s]uccessful isolation of the human GluR7 cDNA requires only a probe that will                                                       
                       hybridize to the human GluR7 under conditions routinely used for cloning a desired                                                        
                       cDNA.”  On this record we do not have such a probe that can be used by the                                                                
                       conditions taught by the references.  Instead we have a teaching that a GluR5 cDNA                                                        
                       probe was used to isolate GluR7 cDNA suggesting that the nucleic acid is cross-                                                           
                       reactive under the conditions relied upon by the examiner.                                                                                
                                 Therefore, while appellants, as noted by the examiner (Answer, bridging                                                         
                       paragraph, pages 14-15) incorrectly view Puckett as teaching a PCR method for                                                             











                                                                                                                                                                 
                       38 Paper No. 21, mailed July 3, 1996.                                                                                                     

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