Ex parte KAMBOJ et al.; Ex parte NUTT; Ex parte FOLDES et al. - Page 58


                  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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