Appeal No. 1999-1393
Application No. 08/242,344
the sequence of GluR7 appears to be the rat counterpart of EAA5, is irrelevant to
the issue of obviousness.”
In our opinion, more is required than merely a high level of homology
between GluR7 and EAA5a to suggest the use of techniques disclosed by Puckett
to obtain DNA encoding any one of EAA5a-5c, identified in the claim by specific
SEQ. ID. NOs. Selective hindsight is no more applicable to the design of
experiments than it is to the combination of prior art teachings. In re Dow Chem.
Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-532 (Fed. Cir. 1988).
Comparing the factual evidence before us, in this case, with the factual
record present in Ex parte Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995)
affirming a rejection based on the rationale applied in this case. In Goldgaber, in
addition to providing the methodology of isolating, identifying and sequencing a
DNA that would encode a known polypeptide, the prior art indicated that the
polypeptide for which the DNA was sought had been purified and the amino acid
sequence was known. (Goldgaber at 1173). There was also information and
guidelines as to the preparation of degenerate oligonucleotide probes based upon
that known amino acid sequence which would have been useful in the disclosed
isolation process. (Id. at 1174). Here the examiner notes (Answer, page 6) that
Bettler ’92 “does not disclose the nucleic acids encoding human EAA5a and
EAA5b receptors.” On the record before us, and as argued
by appellants, the proteins of the claimed invention were not known to be present in
humans, there was only a suggestion by Puckett (page 7559, column 1) that a
similar diversity in rats “is likely to be found in human KA receptors,” which Puckett
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