Appeal No. 1999-2200
Application No. 08/896,063
of the GluR7 open reading frame was identified.” It appears to us that given the
cross-reactivity of the nucleic acids under low stringency hybridization conditions, a
person of ordinary skill in this art would reasonable obtain more than the human
receptor sought.
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.
Therefore we agree with appellants’ argument (Brief, page 24) that:
At most, Puckett would have provided the person of ordinary skill in
the art with a starting point for developing a generally suitable
methodology for isolating a targeted polynucleotide from a DNA
library. The reference would not have provided a method that
reasonably would have been expected to yield a polynucleotide
encoding a human EAA5 receptor in accordance with the claimed
invention.
O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1681 (what was “obvious to try” was to
explore a new technology or general approach that seemed to be a promising field
of experimentation, where the prior art gave only general guidance as to the
particular form of the claimed invention or how to achieve it).
The examiner relies (Answer, page 6) on the observation that rat GluR7 of
Bettler ‘92 and the human EAA5a receptor proteins have 97% sequence identity.
However, after pointing out the difference between rat GluR7 and human EAA5
(Brief45, pages 26-28) appellants’ argue (Brief, page 28) “[t]he fact that, in hindsight,
45 Paper No. 34, received February 6, 1997.
41
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