Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 77


                  Appeal No.  1997-3221                                                                                          
                  Application No.  08/249,241                                                                                    
                          Those nucleotide sequences are the inherent properties of cDNAs                                        
                          which existed in the prior art.  The prior art of record provided                                      
                          compositions containing those cDNAs in the form of … cDNA                                              
                          libraries…. It further provided analogous compositions and the means                                   
                          and motivation to isolate from those libraries a cDNA of the instant                                   
                          invention.  Because a chemical compound and all of its properties are                                  
                          inseparable, and the sequence of a cDNA encoding human GluR3                                           
                          was an inherent property of that compound as it existed prior to being                                 
                          isolated by [a]ppellant, that limitation was fairly taught by the                                      
                          combination of references cited above.                                                                 
                          We note the examiner’s use of “GluR3” instead of either GluR3A or GluR3B.                              
                  This is apparently because the examiner’s combination of references fails to teach                             
                  GluR3A (SEQ ID NO:1) or GluR3B (SEQ ID NO:3).  See specification, page 3, for                                  
                  definition of SEQ ID NOs: 1 & 3 as GluR3A and GluR3B respectively.  Here, the                                  
                  examiner has failed to meet his burden of establishing a prima facie case of                                   
                  obviousness for either of the specifically claimed sequences.  We see no teaching                              
                  in the combination of prior art relied upon by the examiner which teaches, suggests                            
                  or renders the specifically claimed sequences prima facie obvious.  It is the                                  
                  examiner who has the initial burden of establishing unpatentability.  In re Oetiker,                           
                  977 F.2d 1443, 1446,                                                                                           
                  24 USPQ2d 1443, 1445 (Fed. Cir. 1992).  Conclusions of obviousness must be                                     
                  based upon facts, not generality.  In re Warner, 379 F.2d 1011, 1017, 154 USPQ                                 
                  173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re Freed,         425                             
                  F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970).                                                                  
                          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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