Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 33


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                  the isolation of their cDNA, we nevertheless agree with appellants’ conclusion                              
                  (Brief39, page 19) that:                                                                                    

                         [A] person of ordinary skill in the art would have appreciated that                                  
                         numerous parameters in the protocol taught by Puckett would have                                     
                         required considerable adjustment for it to be used to isolate                                        
                         polynucleotides encoding a human EAA5 receptor.                                                      
                         While a person of ordinary skill in the art may possess the requisite                                
                  knowledge and ability to modify the protocol taught by Puckett, the modification is                         
                  not obvious unless the prior art suggested the desirability of the modification.  In re                     
                  Gordon, 733 F.2d 900, 902, 211 USPQ 1125, 1127 (Fed. Cir. 1984).  Here we see                               
                  no such reason to modify the references as applied.                                                         
                         On this record the examiner relies (Answer, page 4) on the hindsight                                 
                  observation that rat GluR7 of Bettler ‘92 and the human EAA5a receptor proteins                             
                  have 97% amino acid sequence identity.  However, the examiner has provided no                               
                  factual evidence that one of ordinary skill in this art could use the techniques of                         
                  Puckett to isolate and identify the DNA sequences encoding the proteins of the                              
                  claimed assay method with a reasonable expectation of success.  In re Vaeck, 947                            
                  F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991).                                                   
                  Claim 38:                                                                                                   
                         The examiner states (Answer, page 15) that “the assay of Bettler employs                             
                  membrane preparation as the source of the rat GluR7 for ligand binding assay, and                           
                  therefore renders the claims obvious.”  In our opinion, the examiner failed to meet                         


                                                                                                                              
                  39 Paper No. 19, received January 22, 1996.                                                                 

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