Appeal No. 1999-1393
Application No. 08/242,344
GluR3 and is different from the Cutting membrane preparation what does not teach
GluR3.
On these facts we agree with the examiner. While the cellular host may be
transformed to contain a heterologous polynucleotide encoding human GluR3, there
is no requirement in the claims that the claimed membrane preparation actually
contain GluR3 protein.
Accordingly, we affirm the examiner’s rejection of claims 23 and 24 under 35
U.S.C. § 102(b) as being anticipated by Cutting.59
The rejections under 35 U.S.C. §103:
The rejection of claims 1, 4, 7, 10, 11, 13, 15, 16, 18, 19, 26 and 42-49:
The examiner reasons (Answer, page 11) that:
[T]he combination of the Sun et al., Puckett et al., Schofield et al. and
Grenningloh et al. publications provided a reasonable expectation that
the sequence and structure of the GluR3 of Heinemann et al. was
predictive of a human homologous protein, they would have found it
prima facie obvious to have isolated cDNAs encoding human GluR3
by screening a human cDNA library like the one described [by] …
Puckett … Schofield …[and] Grenningloh … with a nucleic acid probe
corresponding to the rat GluR3 cDNAs of Heinemann et al. in a
manner that was directly analogous to those that were employed by
each of Puckett et al., Schofield et al. and Grenningloh et al. and then
to incorporate that cDNA into a ligand binding assay like that which
was described by Heinemann….
The examiner notes (Answer, page 12) that the specification discloses two
different nucleotide sequences encoding human GluR3A and GluR3B. However,
the examiner finds (Answer, page 12) that since these two different cDNAs were
isolated from two different libraries, “[i]t is reasonable to assume that these two
cDNA libraries did not come from the same individual.” As a result the examiner
59 Note our statement under 37 CFR § 1.196(c), infra.
72
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