Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 56


                  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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