Appeal No. 1997-3221
Application No. 08/249,241
acids that an artisan would have certainly identified something. That, based on this
record, a skilled artisan would reasonably have expected to isolated GluR2, we can
not agree.
Claim 2:
Appellants’ argue (Brief, pages 13-14) that the GluR2B receptor claimed
differs from the receptor of the prior art.
The examiner, inter alia, states (Answer, page 18) the “cDNAs of the instant
invention are chemical compounds which were present in each of the cDNA
libraries of Puckett et al. and Sun et al. … [a]ppellant’s inventive contribution was the
isolation and characterization of one of these pre-existing compounds and its use in
the production of the other.” We agree. However, the examiner is reminded that
“[t]he consistent criterion for determination of obviousness is whether the prior art
would have suggested to one of ordinary skill in the art that this process should be
carried out and would have a reasonable likelihood of success, viewed in the light of
the prior art.” In re Dow Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). In our opinion, on this record, a person of ordinary skill in the art
would not have a reasonable expectation of success in obtaining the claimed
invention.
Where the examiner fails to establish a prima facie case, the rejection is
improper and will be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
Having determined that the examiner has not established a prima facie case
of obviousness, we find it unnecessary to discuss the Zimmerman Declaration
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