Appeal No. 1997-3221
Application No. 08/249,241
Claims 44 and 49:
Appellants state (Brief, bridging paragraph, pages 23-24) that “[t]he
sequences recited in appellants’ claims 44 and 45, and more particularly plasmids
including these specific sequences, as claimed in claims 49 and 50, would not have
been structurally obvious in light of the combination of references.”
In response the examiner states (Answer, page 19) that:
The simple fact that the nucleotide sequence of the cDNAs encoding
the rat glutamate receptor subunit GluR3 of Heinemann et al. is
different from the sequence of the cDNAs of the instant invention does
not defeat the instant rejection since the prior art of record provided a
structurally similar composition and the motivation to isolate any
analogous compound from any human brain cDNA library of the prior
art. The fact that this property differs slightly and inconsequentially
from individual to individual does not support patentability since these
difference[s] are the innate differences between naturally occurring
compounds and do not constitute an inventive contribution by
[a]pplicant.
By suggesting that “this property differs slightly and inconsequentially from
individual to individual does not support patentability since these difference[s] are
the innate differences between naturally occurring compounds and do not constitute
an inventive contribution” the examiner is essentially adopting a per se rule. We
remind the examiner that there are no per se rules of obviousness. In re Ochiai, 71
F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995). Every case,
particularly those raising the issue of obviousness under section 103, must
necessarily be decided upon its own facts. In re Jones, 958 F.2d 347, 350,
21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
Here again 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
86
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