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.
32
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