Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 16


                  Appeal No.  1999-2200                                                                                         
                  Application No.  08/896,063                                                                                   
                          and the reasonable expectation of success must be founded in the                                      
                          prior art, not in the applicant’s disclosure.                                                         
                          In response to the examiner’s rejection appellants state (Brief, page 10):                            
                                 Given a rat receptor, or any non-human receptor, one of skill                                  
                          may postulate as to the existence of a similar human receptor, but                                    
                          until that receptor is actually isolated, its existence and degree of                                 
                          similarity to the rat receptor with respect to sequence and function,                                 
                          can only be surmised, not reasonably expected.                                                        
                          In our view, in the absence of a reasonable expectation of success of                                 
                  isolating and identifying the specific DNA sequence of the claim, one is left with only                       
                  an “obvious to try” situation which is not the standard of obviousness under 35                               
                  U.S.C.  103.  See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680.                                        
                          The examiner (Answer, bridging paragraph, pages 12-13) does not find the                              
                  argument that a human GluR[5]-2 homology might not exist persuasive.  Instead,                                
                  while noting that “[t]here was no absolute assurance at the time of the invention that                        
                  a human homolog of GluR[5]-2 could be retrieved from a human library,” the                                    
                  examiner finds that the “great preponderance of the evidence of record” in this case                          
                  expressly suggests that “homologs of the rat glutamate receptors will be found in                             
                  mammals generally, including humans.”                                                                         
                          Appellants provide a table (Brief34, pages 19-20) and explain that GluR5-2                            
                  “has only about 97.5% identity with EAA3, including eleven non-conservative                                   
                  substitutions.  In addition to the foregoing differences, GluR5-1 of Heinemann/Bettler                        
                  [‘90] has an additional 15 amino acids between residues 371 and 372 of EAA3,                                  
                  and therefore GluR5-1 has only about 96.5% identity with EAA3a or EAA3b[.]                                    
                  including eight non-conservative substitutions.”  Appellants further identify (Brief,                         
                  page 20) that “eight of the positions at which EAA3 differs from GluR5 of                                     
                  Heinemann/Bettler [‘90] involved serine, i.e., a serine in Heinemann/Bettler [‘90] is                         
                                                                                                                                
                  34 Paper No. 22, received November 27, 1996.                                                                  

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