Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 76


                  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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