Appeal No. 1996-1204
Application No. 08/090,369
[t]his reference did not describe an isolated DNA encoding a human NK-3
receptor or the protein encoded thereby.
Hopkins is cited (Answer, page 5) as describing “the isolation of a DNA encoding a
human NK-1 receptor by screening a human DNA library with a DNA encoding a rat NK-1
receptor” and disclosing that “the open reading frame from this human cDNA shared 89%
sequence homology with a cDNA encoding a rat NK-1 receptor with the two sequences
being most divergent at the two ends.” Similarly, Gerard is cited (Answer, page 6) as
describing "the isolation of a DNA encoding a human NK-2 (substance K) receptor based
upon its anticipated sequence similarity to a DNA encoding a bovine NK-2 receptor” and
additionally disclosing “the substantial sequence similarity between the human, bovine and
rat NK-2 receptors with the three sequences being most divergent at the two ends.”
The examiner concludes (Answer, page 5):
An artisan of ordinary skill, . . . would have found the isolation of a DNA
encoding the human homologue of the rat NK-3 receptor described in the
Shigemoto et. al. reference by screening a human DNA library with a DNA
encoding that rat receptor in a manner directly analogous to the one
described for the isolation of the DNA encoding the human NK-1 receptor in
the Hopkins et. al. reference, to have been prima facie obvious at the time of
the instant invention.
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
On this record, the examiner has pointed to no evidence or facts which would reasonably
establish that the presently claimed human NK-3, or the DNA which encodes it, were
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