Appeal No. 1997-3221
Application No. 08/249,241
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).
Claim 1:
Appellants argue (Brief49, page 7) that “[t]he teachings of a single instance of
similarity between a rat and human glutamate receptor is not predictive even of the
existence, let alone the structure and function, of an analogous human molecule for
each rat receptor or gene." [emphasis removed].
The examiner states (Answer, page 12) that “Sun et al. disclosed a cDNA
encoding two-thirds of the human GluR2 subunit of the instant invention, making it
particularly relevant to the instant rejection.” Specifically, Sun (abstract) identifies “a
second clone, HBGR2, contains approximately two-thirds of the coding region of a
receptor homologous to rat brain clone GluR2.” Sun teaches (page 1443, Materials
and Methods, column 2) that a probe was amplified using two PCR primers derived
from GluR1. This probe was then used (Sun, page 1444, bridging paragraph,
columns 1-2) for ”[h]ybridization screening [of a human brain cDNA library] at high
stringency.” This screen yielded four positive clones, derived from two different
transcripts. The first clone was found to be
49 Paper No. 21, received November 26, 1997.
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