Appeal No. 1997-3221
Application No. 08/249,241
issues raised under 35 U.S.C. § 103. However, after considering the facts in this
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
The initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
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).
Appellants argue (Brief47, page 5) that the amino acid sequence of the
human GluR1B receptor as recited in the claims is not taught by Puckett.
Appellants provide a table (Brief, page 6) highlighting the differences between
Puckett and SEQ ID NO:2.
In response the examiner states (Answer, bridging paragraph, pages 7-8):
The simple fact that the nucleotide sequence of the DNA encoding the
human glutamate receptor subunit of Puckett et al. is different from the
DNA sequence of the instant invention does not defeat the instant
rejection since the prior art of record provided a structurally similar
composition and the motivation to isolate any analogous compound
from any human brain cDNA library. The fact that this property differs
slightly and inconsequentially from individual to individual does not
support patentability since these difference[s] are the innate
differences between naturally occurring compounds and do not
constitute an inventive contribution by [a]ppellant.
We remind the examiner that generalization is to be avoided insofar as
specific structures are alleged to be prima facie obvious one from the other.
47 Paper No. 17, received June 25, 1996.
49
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