Appeal No. 2000-1779 Application No. 08/473,204 1992). Furthermore, to establish a prima facie case of obviousness, there must be both some suggestion or motivation to modify the references or combine reference teachings and a reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). In response to the examiner’s rejection appellants’ state (Brief, bridging paragraph, pages 13-14): Given a rat receptor, or any non-human receptor, one of skill may postulate as to the existence of a similar human receptor, but until that receptor is actually isolated, its existence and degree of similarity to the rat receptor with respect to sequence and function, can only be surmised, not reasonably expected. Appellants further provide a table (Brief37, page 7), and corresponding explanation of the differences between GluR6 and EAA4a and EAA4b. In the absence of a reasonable expectation of success of isolating and identifying the specific DNA sequence of the claim, one is left with only an “obvious to try” situation which is not the standard of obviousness under 35 U.S.C. § 103. See In re O’Farrell, 853 F.2d at 903, 7 USPQ2d at 1680. The examiner states (Answer, page 14) “[t]here is no art of record which reports that a human homologue of a known rat neurotransmitter receptor does not exist.” The examiner after citing the Puckett reference for its teaching of the conservation in the human and rat kainate receptor subunits, states (Answer, page 13) “[w]hereas it is certain that not every gene which is present in one mammal will have a homologous gene in a second mammal, an artisan had more than a reasonable expectation that humans contain a gene that was homologous to the GluR6 gene.” The examiner continues by stating (Answer, bridging paragraph, pages 14-15) that: 37 Paper No. 15, received November 12, 1996. 25Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 NextLast modified: November 3, 2007