Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 18

                  Appeal No.  1999-2200                                                                                         
                  Application No.  08/896,063                                                                                   
                          Notwithstanding this lack of assurance that a human homolog could be                                  
                  successfully retrieved the examiner believes that an artisan of ordinary skill would                          
                  have expected to retrieve a human GluR5-2 homolog having several conservative                                 
                  and nonconservative substitutions relative to the rat sequence.  We are left to guess                         
                  at which EAA3 subtype (e.g. EAA3a, EAA3b, EAA3c, or EAA3d) this homolog                                       
                  would represent.                                                                                              
                          In our opinion, more is required than merely a high level of homology                                 
                  between GluR5-2 and EAA3a-b to suggest the use of techniques disclosed by                                     
                  Puckett to obtain DNA encoding any one of EAA3a-d.  We compare the factual                                    
                  evidence before us, in this case, with the factual record present in Ex parte                                 
                  Goldgaber, 41 USPQ2d 1172 (Bd. Pat. App. & Int. 1995) where a rejection based                                 
                  on the rationale applied in this case was affirmed.  In Goldgaber, in addition to                             
                  providing the methodology of isolating, identifying and sequencing a DNA that                                 
                  would encode a known polypeptide, the prior art indicated that the polypeptide for                            
                  which the DNA was sought had been purified and the amino acid sequence was                                    
                  known.  (Goldgaber at 1173).  There was also information and guidelines as to the                             
                  preparation of degenerate oligonucleotide probes based upon that known amino                                  
                  acid sequence which would have been useful in the disclosed isolation process. (Id.                           
                  at 1174).  On the record before us, and as argued by appellants, the proteins of the                          
                  claimed invention were not known to be present in humans.  Further, the examiner                              
                  has provided no evidence which would provide a reasonable suggestion,                                         
                  motivation, or direction which would have led one of ordinary skill in this art to use                        
                  the techniques of Puckett to isolate and identify the DNA sequences which would                               


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