Appeal No. 2000-1779 Application No. 08/473,204 The initial burden of establishing reasons for unpatentability rests on the examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 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). Claim 1: Appellants argue (Brief49, page 7) that “[t]he teachings of a single instance of similarity between a rat and human glutamate receptor is not predictive even of the existence, let alone the structure and function, of an analogous human molecule for each rat receptor or gene." [emphasis removed]. The examiner states (Answer, page 12) that “Sun et al. disclosed a cDNA encoding two-thirds of the human GluR2 subunit of the instant invention, making it particularly relevant to the instant rejection.” Specifically, Sun (abstract) identifies “a second clone, HBGR2, contains approximately two-thirds of the coding region of a receptor homologous to rat brain clone GluR2.” 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, bridging paragraph, columns 1-2) 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 49 Paper No. 21, received November 26, 1997. 56Page: Previous 49 50 51 52 53 54 55 56 57 58 59 60 61 62 63 NextLast modified: November 3, 2007