Appeal No. 1999-1393
Application No. 08/242,344
Thus a GluR1 probe cross-reacts with GluR2 and GluR3. Heinemann further
teaches that a GluR2 probe cross-reacts with GluR4 and GluR5 (Heinemann,
Example 14, page 33).
Here the examiner compares appellants’ disclosed sequence with that of the
prior art and finds that the human receptor GluR2 is 98.9% identical to the rat
receptor (Answer, bridging paragraph, pages 5-6). However, without prior
knowledge of appellants’ sequence, the degree of identity between the claimed
human GluR2B and rat GluR2 was unknown. "To imbue one of ordinary skill in the
art with knowledge of the invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim to the insidious effect of
a hindsight syndrome wherein that which only the inventor taught is used against its
teacher.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Given the degree of cross-reactivity between at least GluR1-5 (as taught by
the prior art of record), and the existence of alternative splicing variants amongst
these receptors, we can not agree with the examiner that “an artisan would have
been certain that a cDNA encoding the entire human GluR2 subunit could be
isolated by employing those methods which were routine in the art at the time of the
instant invention.” Those methods routine in the art were used to identify GluR1-5 as
discussed in the prior art relied upon by the examiner. We do not disagree that
given the apparent cross-reactivity of these receptor nucleic
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