Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 43


                  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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