Appeal No. 1999-2200
Application No. 08/896,063
human receptors in which those receptors were structurally and functionally
analogous to rat receptors which were also described therein.” While we do not
disagree with the examiner’s statement, we do disagree with the conclusion he
draws from it, based on the facts in this record.
The examiner sets forth Moriyoshi as teaching the rat NMDAR1, Puckett for
the teaching that human GluH1 was isolated using a probe from rat GluR1, and two
references (Grady and Zhou) which teach cloning cDNA for the human dopamine
receptors. However, on this record the examiner does not address which of
appellants’ receptor variants are reasonably expected to be identified using the
methodology set forth in the rejection. Appellants report (specification, page 4, lines
27-30) that “[n]aturally occurring variants include, but are not restricted to, the
receptor variants of the human NMDAR1-1 receptor herein designated human
NMDAR1-2, NMDAR1-3A, NMDAR1-3B, NMDAR1-3C, NMDAR1-4, NMDAR1-5,
NMDAR1-6, NMDAR1-7 and NMDAR1-8.”
At the time this invention was made, and on this record, an artisan only had
knowledge of Moriyoshi’s rat NMDAR1 sequence. There was no recognition, as
appellants’ note (Brief, page 17), that a human counterpart to the rat receptor
existed, let alone that a number of naturally occurring variants existed. In re
O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness
also requires a “reasonable expectation of success”).
The examiner’s rejection of all the claims requires the successful isolation of
a cDNA what encodes the human NMDAR1 receptor(s). In our opinion, on this
record, there was no reasonable expectation of successfully isolating such a
receptor.
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