Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 63


                  Appeal No.  1997-3221                                                                                       
                  Application No.  08/249,241                                                                                 
                  case we believe the better course of action is to move forward with a decision on                           
                  the merits of this appeal.                                                                                  
                         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 22:                                                                                                   
                         The examiner states (Answer53, bridging paragraph, pages 6-7) that:                                  

                         Because a practitioner of the art of molecular biology was well aware                                
                         that the ultimate value of a glutamate receptor subunit like those of                                
                         Heinemann et al. would lie in the applicability of the data derived                                  
                         therefrom to human subjects, as evidenced by the statements of Sun                                   
                         et al., that artisan would have found the isolation of a DNA encoding                                
                         the entire human counterpart of the rat GluR2 that was disclosed in the                              
                         Heinemann et al. publication by probing a human cDNA library with a                                  
                         rat nucleic acid probe in a manner that was directly analogous to the                                
                         one described by Puckett et al. to facilitate the recombinant                                        
                         expression and characterization of the encoded product in the                                        
                         absence of other human glutamate receptors for those reasons                                         
                         disclosed by Sun et al. to have been prima facie obvious to an artisan                               
                         of ordinary skill in the art of molecular biology at the time the instant                            
                         invention was made.                                                                                  
                         Appellants discuss the differences between the GluR2B receptor recited in                            
                  the instant claims and the prior art, and argue (Brief54, pages 13-15) that “[t]he art                      

                  fails to suggest not only the existence of appellants’ GluR2B receptor, but also the                        
                  structure and sequence of such a protein.”                                                                  
                                                                                                                              
                  53 Paper No. 37, mailed March 18, 1999.                                                                     

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