Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 25


                  Appeal No.  1997-3221                                                                                        
                  Application No.  08/249,241                                                                                  
                  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.                                                                 

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