Appeal 2007-1819
Application 09/886,055
favored this record with any fact-based reasoned analysis as to why any
particular GPCR subfamily to which SEQ ID NO: 27 shares homology
should be favored over another. The Examiner has also not favored this
record with a fact-based reasoned analysis as to why a person of ordinary
skill in this art would reasonably find that the degree of homology shared
with SEQ ID NO: 27 and an olfactory receptor would have led a person of
ordinary skill in the art to conclude that it is an olfactory receptor.
Notwithstanding the Examiner’s conjecture as to whether Appellants
have derived a protein with this sequence from prior art homologues, or in
an attempt to obtain alternate compounds with improved properties (Answer
9), the issue before this panel is whether the prior art recognized that a
protein having the sequence of SEQ ID NO: 55 would have been expected to
be an olfactory receptor. For the reasons discussed above, neither
Krautwurst nor Burford provide this teaching.
Obviousness requires a teaching that all elements of the claimed
invention are found in the prior art and “a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). There is no doubt that the
Examiner found each of Appellants’ claimed elements in the prior art. What
is missing, however, is a factual basis to support a finding that a person of
ordinary skill in the art would have reasonably expected that Appellants’
SEQ ID NO: 55 is an olfactory receptor that could have been used in the
method taught by Krautwurst with a reasonable expectation of success in
representing sensory perception as is required by Appellants’ claimed
invention.
9
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