Appeal No. 1997-3221
Application No. 08/249,241
later refines (page 7561, column 1) by stating “[t]he molecular cloning of additional
human glutamate receptor genes will be necessary to confirm the conservation of
this gene family in humans.” Further, the examiner has provided no evidence which
would provide a reasonable suggestion, motivation, or direction which would have
led one of ordinary skill in this art to use the techniques of Puckett to isolate and
identify the DNA sequences which would encode such unknown proteins. In re
Vaeck, 947 F.2d 488, 494, 20 USPQ2d 1438, 1443-444 (Fed. Cir. 1991).
As noted above, Bettler ’92 teaches receptor nucleic acid cross-reactivity using low
stringency hybridization.
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 claimed EAA5 DNA compounds.
Claim 10:
The examiner states (Answer, page 8) that “[t]he expression vector
containing the nucleic acid encoding human GluR7 would be an obvious variant of
the plasmid recited in claims 10 and 40.”
Having determined that the examiner failed to meet the burden of
establishing a prima facie case for obviousness for obtaining the claimed isolated
polynucleotide, we are unable to find any reason, suggestion, or motivation in the
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