Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 113


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

                          In our opinion, upon consideration of Figure 7 (Specification), claim 21 read                        
                  in the light of the specification reasonably apprises those skilled in the art both of                       
                  the utilization and scope of the invention.  We do not find the claim indefinite.                            
                          Accordingly, we reverse the rejection of claim 21 under 35 U.S.C. § 112,                             
                  second paragraph84.                                                                                          
                  Rejections under 35 U.S.C. § 103:                                                                            
                  The rejection of claims 14 and 15:                                                                           
                          The examiner states (Answer, page 9) that:                                                           
                          [T]he combination of the Puckett et al., Schofield et al. and                                        
                          Grenningloh et al. publications provided a reasonable expectation that                               
                          the sequence and structure of the NR1 and NR2B subunits of Monyer                                    
                          et al. were predictive of a human homologous proteins, they would                                    
                          have found it prima facie obvious to have isolated cDNAs encoding                                    
                          human NR1 (NMDAR1) and NR2B (NR3) by screening a human                                               
                          cDNA library like the one described … [by] Puckett … Schofield …                                     
                          and … Grenningloh … with a nucleic acid probe corresponding to the                                   
                          rat NR1 and NR2B cDNAs of Monyer et al. in a manner that was                                         
                          directly analogous to those that were employed by each of Puckett et                                 
                          al., Schofield et al. and Grenningloh et al.                                                         
                  Claim 14:                                                                                                    
                          Appellants argue (Brief, page 14) that:                                                              
                                 Given knowledge a rat or any other, non-human receptor                                        
                          subunit protein, the skilled artisan may postulate as to the existence of                            
                          a similar human receptor subunit protein, but until that receptor is                                 
                          actually isolated, its existence and degree of similarity to the rat                                 
                          receptor subunit protein with respect to sequence and function, can                                  
                          only be surmised, not reasonably expected.                                                           
                          The examiner identifies (Answer, page 6) figure 1 (page 1218) of Monyer as                           
                  teaching four putative transmembrane domains that are believed to be common to                               
                  all ionotrophic receptor subunits.  We note that this figure recites the sequences of                        

                                                                                                                               
                  84 In reversing the examiner’s rejection under 35 U.S.C. § 112, second paragraph,                            
                  we note 37 CFR § 1.822(o) discussed infra, with regard to Appeal No. 2000-0440.                              

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