Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 83


                  Appeal No.  1999-2200                                                                                          
                  Application No.  08/896,063                                                                                    
                          The examiner’s rejection (Answer, bridging paragraph, pages 7-8) finds that                            
                  it would have been prima facie obvious to isolate GluR3 from a human cDNA library                              
                  by probing that library with a rat nucleic acid probe taught by Heinemann, using                               
                  methodology described by Puckett. The examiner, citing In re Pleuddemann, 910                                  
                  F.2d 823, 15 USPQ2d 1738 (Fed. Cir. 1990), states (Answer, page 4) that “[t]he                                 
                  novelty of the instant invention is in the use of a novel nucleic acid in that method and                      
                  not in the method itself and, therefore, the patentability of the claimed method is                            
                  dependent upon the patentability of the nucleic acid employed therein.”                                        
                          Sun teaches (page 1443, Materials and Methods, column 2) that a probe                                  
                  was amplified using two PCR primers derived from GluR1.  This probe was then                                   
                  used (Sun, page 1444, column 1) for ”[h]ybridization screening [of a human brain                               
                  cDNA library] at high stringency.”  This screen yielded four positive clones, derived                          
                  from two different transcripts.  The first clone was found to be homologous to rat                             
                  GluR1, the second clone was found to be homologous to GluR2.  Sun, page 1444,                                  
                  bridging paragraph, columns 1-2.                                                                               
                          At this point we find that under high stringency hybridization conditions, a                           
                  probe for GluR1 cross-reacts with GluR2.  Little more is provided in Sun, other than                           
                  the “note” at page 1447 which states “[a]fter submission of this manuscript, a paper                           
                  [referring to Puckett] appeared reporting …GluH1.  This cDNA shows differences                                 
                  with HBGR1 … in a region corresponding to the alternatively spliced 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.                                                                    

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