Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 42


                  Appeal No.  1999-2200                                                                                       
                  Application No.  08/896,063                                                                                 
                  the sequence of GluR7 appears to be the rat counterpart of EAA5, is irrelevant to                           
                  the issue of obviousness.”                                                                                  
                         In our opinion, more is required than merely a high level of homology                                
                  between GluR7 and EAA5a to suggest the use of techniques disclosed by Puckett                               
                  to obtain DNA encoding any one of EAA5a-5c, identified in the claim by specific                             
                  SEQ. ID. NOs.  Selective hindsight is no more applicable to the design of                                   
                  experiments than it is to the combination of prior art teachings.  In re Dow Chem.                          
                  Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-532 (Fed. Cir. 1988).                                           
                         Comparing 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)                            
                  affirming a rejection based on the rationale applied in this case.  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).  Here the examiner notes (Answer, page 6) that                            
                  Bettler ’92 “does not disclose the nucleic acids encoding human EAA5a and                                   
                  EAA5b receptors.”  On the record before us, and as argued                                                   
                  by appellants, the proteins of the claimed invention were not known to be present in                        
                  humans, there was only a suggestion by Puckett (page 7559, column 1) that a                                 
                  similar diversity in rats “is likely to be found in human KA receptors,” which Puckett                      

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