Appeal No. 1999-1393
Application No. 08/242,344
Here the examiner compares appellants’ disclosed sequence with that of the
prior art and finds that the amino acid sequence of the human receptor GluR2 is
98% identical to the rat receptor (Answer, page 5). 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 (Answer, page 7) that “more
than a reasonable expectation that rat GluR2 was structurally and functionally
predictive of a homologous human protein and that a cDNA encoding it could be
isolated by employing the method of Puckett.” The references relied upon, supra,
teach that the low stringency hybridization method of Puckett would identify GluR1-5.
We do not disagree that given the apparent cross-reactivity of these receptor
nucleic acids that an artisan would have certainly identified something. However,
based on this record, we do not agree with the examiner that “employing the method
of Puckett” a skilled artisan would reasonably have expected to isolate GluR2B as
recited in the claim invention.
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