Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 74


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

                  exon identified in the rodent clones by Sommer [‘92] … and designated as flip and                              
                  flop forms of GluR1.”  So not only is there cross-reactivity between the receptors,                            
                  there is also the possibility of alternative splicing events.                                                  
                          Puckett relied upon by the examiner (Answer, page 11) to teach isolation of                            
                  human GluR1, teaches the use of a reduced stringency hybridization (bridging                                   
                  paragraph pages 7557-558).  Furthermore, Puckett also teaches the existence of                                 
                  alternative splicing events (page 7560, column 1), later confirmed by Sun’s “note,”                            
                  supra.                                                                                                         
                          The examiner relies upon Heinemann to teach GluR3 (Answer, page 4).  We                                
                  note Heinemann’s Example 8 (page 27) which teaches “cDNA clones encoding the                                   
                  GluR2 and GluR3 genes were isolated from an adult rat forebrain library using a                                
                  low-stringency hybridization screening protocol … and a radiolabeled fragment of                               
                  the GluR1 cDNA as a probe.”                                                                                    
                          Thus a GluR1 probe cross-reacts with GluR2 and GluR3.  Thus, at the time                               
                  this invention was made, following the methodology set forth by the examiner one                               
                  would have expected a probe based on Heinemann’s GluR3 to cross-react with at                                  
                  least GluR1-2.                                                                                                 
                          It is unclear from this record where the examiner finds an objective basis to                          
                  apply Grenningloh and Schofield, neither of which teaches a glutamate receptor.                                
                  Before, a conclusion of obviousness may be made based on a combination of                                      
                  references, there must have been a reason, suggestion, or motivation to lead an                                
                  inventor to combine those references.  Pro-Mold & Tool Co. v. Great Lakes                                      
                  Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).                                     







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