Appeal No. 1997-3221
Application No. 08/249,241
addition to providing the methodology of isolating, identifying and sequencing a
DNA which would encode a known polypeptide, the prior art indicated that the
polypeptide for which the DNA was sought had been purified and the amino acid
sequence was known.
On the record before us, and as argued by appellants, the proteins of the
claimed invention were not known to be present in humans, there was only a
suggestion by Puckett (Page 7559, column 1) that a similar diversity in rats “is likely
to be found in human KA receptors.” Further, the examiner has provided no
evidence that would provide a reasonable suggestion, motivation, or direction that
would have led one of ordinary skill in this art to use the techniques of Puckett to
isolate and identify the DNA sequences that encode such unknown proteins. In re
Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991).
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. On these facts, we are constrained to reach the conclusion that the
examiner has failed to provide the evidence necessary to support a prima facie
case of obviousness as to the EAA4 receptors used in the claimed assay method.
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).
Accordingly we reverse the examiner’s rejection of claims 26, 27, 40,
45 and 47-52 under 35 U.S.C. § 103 as being unpatentable over Egebjerg in
view of Puckett or Sun.
Claim 28:
27
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