Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 35


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                         In establishing this rejection the examiner states (Answer, bridging                                 
                  paragraph, pages 6-7) that “it would have been obvious to the skilled artisan to                            
                  isolate the cDNA encoding human GluR7 (EAA5a receptor) by using the cDNA                                    
                  encoding rat GluR7 of Heinemann as a probe to screen a human brain cDNA                                     
                  library, as taught by Heinemann.”  The examiner states (Answer, page 6) that                                
                  “Heinemann 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 40).”                                
                  Heinemann (page 40, Example 19) teaches that “cDNA clones encoding the GluR6                                
                  and GluR7 genes were isolated from a[n] adult rat forebrain library using a low-                            
                  stringency hybridization screening protocol … and … GluR5 cDNA as probe.”                                   
                         This again emphasizes the cross-reactivity and resulting unpredictability                            
                  associated with isolating an EAA5 cDNA (having the claimed SEQ ID NOs)                                      
                  according to the methodology set forth by the examiner.                                                     
                  Claim 38:                                                                                                   
                         The examiner relies upon Werner to teach binding assays.  However, the                               
                  examiner again fails to provide the factual evidence necessary to demonstrate that                          
                  a person of ordinary skill would have a reasonable expectation of success in                                
                  obtaining the nucleic acid necessary to perform the claimed assay method.                                   
                  Therefore, in our opinion, the examiner failed to meet her burden of establishing a                         
                  prima facie case of obviousness in obtaining the necessary nucleic acid to use in                           
                  obtaining these membrane preparations.                                                                      





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