Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 40


                  Appeal No.  1999-1393                                                                                       
                  Application No.  08/242,344                                                                                 
                  GROUNDS OF REJECTION42                                                                                      

                         Claims 1, 2, 8-21 and 40 are rejected under 35 U.S.C. § 103 as being                                 
                  unpatentable over Bettler ‘92 in view of Puckett43.                                                         

                  We reverse.                                                                                                 
                  Claim 1:                                                                                                    
                         The examiner states (Answer44, page 8) that:                                                         

                         [I]t would have been prima facie obvious to the skilled artisan at the                               
                         time the invention was made to isolate the cDNA encoding human                                       
                         GluR7 (EAA5) by using the nucleic acid of rat GluR7 of Bettler [‘92] as                              
                         a probe to screen a human brain cDNA library, as taught by Puckett,                                  
                         in order to obtain large quantities of human GluR7 by subcloning the                                 
                         isolated nucleic acid into an expression vector and transfecting the                                 
                         expression vector into a host cell such as Hela cells or Xenopus                                     
                         oocytes.                                                                                             
                         We emphasize the examiner’s statement to use the rat GluR7 nucleic acid as                           
                  a probe to screen a human brain cDNA library as taught by Puckett.  The screening                           
                  method taught by Puckett uses reduced stringency conditions (Puckett, bridging                              
                  paragraph, pages 7557-558, and page 7558, Results, column 1).  Bettler ’92                                  
                  teaches (page 259, column 1) that “[t]he coding region of the GluR5 cDNA clone                              
                  was used as a probe to screen a rat cerebellum cDNA library under low stringency                            
                  hybridization conditions … [o]ne cDNA clone encoding part                                                   


                                                                                                                              
                  42 We note the examiner’s new ground of rejection of claims 1 and 2 under                                   
                  35 U.S.C. § 112, first paragraph made in the Answer, was withdrawn by the                                   
                  examiner in the Supplemental Answer (Paper No. 37, mailed September 19, 1997.                               
                  43 We note the examiner withdrew her reliance on Heinemann that was applied in                              
                  the Final Rejection (Paper No. 27, mailed June 6, 1996) in the alternative with                             
                  Bettler ’92 in view of Puckett.                                                                             
                  44 Paper No. 35, mailed May 13, 1997.                                                                       

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