Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 17

                  Appeal No.  1999-2200                                                                                         
                  Application No.  08/896,063                                                                                   

                  changed to something other [than] serine, or something other than serine in                                   
                  Heinemann/Bettler [‘90] is changed to a serine."  Appellants conclude (Brief, page                            
                  20) that due to serine’s involvement in phosphorylation and glycosylation, “a skilled                         
                  artisan would not be inclined to make serine substitutions, based on the potential                            
                  effect of phosphorylation and/or glycosylation on receptor activity.”                                         
                          In response the examiner states (Answer, page 9) that:                                                
                                 The presence of non-conservative substitutions in human vs.                                    
                          rat GluR5/EAA3 does not imply unobviousness for one of ordinary                                       
                          skill in the art of molecular biology. … the ordinarily skilled molecular                             
                          biologist would undertake to use probes or primers based upon the                                     
                          sequence in hand to identify and isolate the desired mammalian                                        
                          homolog, as evidenced, for example, by Puckett.                                                       
                          The examiner concludes (Answer, page 10) that an artisan of ordinary skill                            
                  “would thus have expected to retrieve a human GluR5-2 homolog having several                                  
                  conservative and nonconservative substitutions relative to the rat sequence.                                  
                          However, initially, we note that while the claim recites a Markush grouping of                        
                  four distinct EAA3 receptors, we find nothing in the examiner’s rejection or                                  
                  arguments which reasonably teaches or suggests any one of these specific                                      
                  sequences, identified by SEQ ID Nos.  In fact, the examiner expressly states                                  
                  (Answer, page 12) 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.”  We further note the examiner indicated (Final Rejection, Paper No. 15,                             
                  mailed March 27, 1996) claims 41, 42, 46 and 47 as allowable.  These claims are                               
                  limited to methods using the EAA3c and EAA3d receptors.                                                       


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