Appeal No. 2000-1780 Application No. 08/403,663 acids that an artisan would have certainly identified something. That, based on this record, a skilled artisan would reasonably have expected to isolated GluR2, we can not agree. Claim 2: Appellants’ argue (Brief, pages 13-14) that the GluR2B receptor claimed differs from the receptor of the prior art. The examiner, inter alia, states (Answer, page 18) the “cDNAs of the instant invention are chemical compounds which were present in each of the cDNA libraries of Puckett et al. and Sun et al. … [a]ppellant’s inventive contribution was the isolation and characterization of one of these pre-existing compounds and its use in the production of the other.” We agree. However, the examiner is reminded that “[t]he consistent criterion for determination of obviousness is whether the prior art would have suggested to one of ordinary skill in the art that this process should be carried out and would have a reasonable likelihood of success, viewed in the light of the prior art.” In re Dow Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). In our opinion, on this record, a person of ordinary skill in the art would not have a reasonable expectation of success in obtaining the claimed invention. Where the examiner fails to establish a prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Having determined that the examiner has not established a prima facie case of obviousness, we find it unnecessary to discuss the Zimmerman Declaration 59Page: Previous 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 NextLast modified: November 3, 2007