Appeal No. 1999-1393
Application No. 08/242,344
In our opinion, upon consideration of Figure 7 (Specification), claim 21 read
in the light of the specification reasonably apprises those skilled in the art both of
the utilization and scope of the invention. We do not find the claim indefinite.
Accordingly, we reverse the rejection of claim 21 under 35 U.S.C. § 112,
second paragraph84.
Rejections under 35 U.S.C. § 103:
The rejection of claims 14 and 15:
The examiner states (Answer, page 9) that:
[T]he combination of the Puckett et al., Schofield et al. and
Grenningloh et al. publications provided a reasonable expectation that
the sequence and structure of the NR1 and NR2B subunits of Monyer
et al. were predictive of a human homologous proteins, they would
have found it prima facie obvious to have isolated cDNAs encoding
human NR1 (NMDAR1) and NR2B (NR3) by screening a human
cDNA library like the one described … [by] Puckett … Schofield …
and … Grenningloh … with a nucleic acid probe corresponding to the
rat NR1 and NR2B cDNAs of Monyer 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.
Claim 14:
Appellants argue (Brief, page 14) that:
Given knowledge a rat or any other, non-human receptor
subunit protein, the skilled artisan may postulate as to the existence of
a similar human receptor subunit protein, but until that receptor is
actually isolated, its existence and degree of similarity to the rat
receptor subunit protein with respect to sequence and function, can
only be surmised, not reasonably expected.
The examiner identifies (Answer, page 6) figure 1 (page 1218) of Monyer as
teaching four putative transmembrane domains that are believed to be common to
all ionotrophic receptor subunits. We note that this figure recites the sequences of
84 In reversing the examiner’s rejection under 35 U.S.C. § 112, second paragraph,
we note 37 CFR § 1.822(o) discussed infra, with regard to Appeal No. 2000-0440.
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