Appeal No. 1997-3221
Application No. 08/249,241
In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
An essential component of the examiner’s rejection and the claimed
invention is that a nucleotide sequence be available to engineer a cell to produce
the human receptor GluR1B having the amino acid sequence of residues 1-888 of
SEQ ID NO:2. Given the recognition in the ‘032 patent that any polynucleotide
encoding GluR1B having the amino acid sequence of residues of SEQ ID NO:2 is
patentable. We find the examiner’s rejection of the claimed method of assaying in
conflict with In re Pleuddemann, 910 F.2d 823, 828, 15 USPQ2d 1738, 1742 (Fed.
Cir. 1990)(reversing a rejection under 35 U.S.C. § 103 of a method claim which
uses appellants’ new compounds, which constitute the essential limitation of the
claims).
Furthermore, we do not agree with the examiner’s speculation that “it is more
than reasonable to conclude that they [the sequence required by the claimed
invention, and Puckett’s sequence] are nothing more than allelic variants of the
same protein” and that “either of these DNAs would have been prima facie obvious
in view of the other at the time of the instant invention.” We remind the examiner that
“[t]he Patent Office has the initial duty of supplying the factual basis for its rejection.
It may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
By suggesting that Puckett’s sequence and the claimed sequence are
“nothing more than allelic variants” where one is “obvious in view of the other,” the
examiner not only speculates that the differences are a result of allelic variation, but
the examiner is essentially adopting a per se rule that among the genus of allelic
variants every species is obvious. This is clearly in error. Every case, particularly
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