Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 49


                  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.                                                                    

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