Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 75


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    

                          The examiner’s states (Answer, bridging paragraph, pages 10-11) that:                                  
                          [T]he … publications are being relied upon in combination because                                      
                          they show that it was known in the art prior to the making of the instant                              
                          invention that the sequences and structures of those proteins that                                     
                          serve as the subunits of ligand-gated ion channels (a.k.a. ionotropic                                  
                          receptors) from one mammal were known to be predictive of the                                          
                          structures and functions of homologous proteins from other mammals                                     
                          and that an artisan had more than a reasonable expectation the                                         
                          structure and function of the GluR3 subunit of Heinemann et al. to be                                  
                          predictive of a homologous human protein.                                                              
                          However, given the teachings of Sun, Puckett and Heinemann, supra, of                                  
                  cross-reactivity at the nucleic acid level we are of the opinion that a person of                              
                  ordinary skill in the art would not have a reasonable expectation of success in                                
                  isolating the GluR3A or GluR3B receptor.  Furthermore, none of these references                                
                  teach the existence of two forms of the GluR3 receptor, GluR3A and 3B.  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).                                                                    
                          We do not agree with the examiner’s conclusion (Answer, page 12) that due                              
                  to the library in which they were isolated the GluR3A and GluR3B sequences                                     
                  “obviously correspond to allelic variations of the same protein and appear to be                               
                  functionally indistinguishable.”  On this record, in the absence of appellants’                                
                  disclosure a person of ordinary skill in the art would not have known that GluR3a and                          


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