Ex parte KAMBOJ et al.; Ex parte FOLDES et al. - Page 86


                  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                                     

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