Appeal No. 1997-3221
Application No. 08/249,241
GluR3B existed. We remind the examiner that “[t]he Patent Office has the initial duty
of supplying the factual basis for its rejection. It may not, because it may doubt that
the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
Here, we agree with the appellants (Brief, pages 14-18) that there is no
teaching or suggestion in the applied prior art of the GluR3A receptor having the
amino acid sequence of residues 1-866 of SEQ ID NO:2 or the GluR3B receptor
having amino acid sequence of residues 1-866 of SEQ ID NO:4 as required by the
claim. In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995);
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). We
also do not find that there was a reasonable expectation that one could have
obtained such a receptor sequence required to perform the claimed methods. In re
O’Farrell, 858 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988)(obviousness
also requires a “reasonable expectation of success.”)
Claim 46:
Appellants argue (Brief, page 35) “[t]he [e]xaminer also has not explained
why the combination of documents would have suggested an assay using specific
DNA sequences as recited in claims 46-49.” [emphasis removed].
In response the examiner states (Answer, bridging paragraph, pages 29-
30:
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