Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 50


                  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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