Appeal No. 1999-1393
Application No. 08/242,344
those raising the issue of obviousness under section 103, must necessarily be
decided upon its own facts. In re Jones, 958 F.2d 347, 350, 21 USPQ2d
1941, 1943 (Fed. Cir. 1992).
Puckett teaches (page 7560, bridging paragraph, columns 1-2) that:
Many of the amino acid differences (9 of 25 amino acids)
between GluHI and GluRI are in a single 38-amino acid region defined
by Sommer et al [‘92].… In rodent KA receptors this region is
encoded by alternatively spliced exons…. The alternative splicing of
the exons encoding this region produces KA-sensitive receptor
subunits with different agonist and desensitization profiles. Sommer
et al. [‘92] …have designated these different types of receptor
subunits “flip” and “flop.” The human cDNA encoding GluHI would be
considered as the flip counterpart to the flop version of the rodent
clone GluRI…. The conservation of the sequences encoding the flip
type of receptor in GluHI suggests that the alternative splicing of
similar exons will be used in human glutamate receptor genes.
Thus, as appellants argue (Brief, page 6) “[g]iven the teachings of Puckett,
one of skill in the art would not have known that a human GluR1B existed, or that the
alterations noted … could have been made to the GluH1 to yield a functional AMPA-
binding receptor.”
Here, we agree with the appellants that there is no teaching or suggestion in
the applied prior art of the GluR1B receptor having the amino acid sequence of
residues 1-888 of SEQ ID NO:2 as required by the claim. In re Ochiai,
71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995); In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). We also do not
find that there was a reasonable expectation that one could have obtained such a
receptor sequence required to perform the claimed methods. In re
O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness
also requires a “reasonable expectation of success”).
Claim 34:
51
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